Indian Patents Act, 1970 enables any person to register his or her invention as exclusive intellectual property with certain conditions. The Act further allows the public to object to grant of a patent via two opposition proceedings- one, before the grant of a patent (pre-grant opposition) and the other, after the grant of a patent (post-grant opposition). The main purpose of opposition is to bar any unlawful or wrongful grant of a patent in a simple and cost-effective manner. It also aids the Controllers of Patents in weeding out the frivolous applications. The various grounds for filing pre and post-grant opposition are laid down under Sections 25(1) and 25(2) of the Indian Patents Act.
It is interesting to note that while a pre-grant opposition can be filed by “any person” after publication of the patent application, a post-grant opposition can be pursued only by a “person interested” within one year from the date of publication of the granted patent.
A question that emerges now is the definition of “any person”. The issue was recently discussed by the Bombay High Court in the case of Dhaval Diyora vs. Union of India (WP (L) 3718/2020).
In the above-stated case, Mr. Dhaval Diyora, engaged in the business of diamonds, filed a pre-grant opposition on August 18, 2020 against Pfizer’s patent application regarding the generic drug tofacitinib, which was pending before the Intellectual Property Appellate Board (IPAB). The Board, however, refused to entertain the opposition application on the ground that it was not filed in accordance to the prescribed procedure. Discontent with the Board’s decision, Mr. Diyora filed a writ petition before the Bombay High Court against the order of the IPAB.
It was observed by the High Court of Bombay that the petitioner ran a diamond business which was entirely distinct from the pharmaceutical sector. Further noting that the petitioner had filed multiple oppositions and thus was a ‘habitual frontman’, the Court held that it had serious doubt about the credentials of the Petitioner whose sole intention was to delay the grant of patents. The petition was accordingly dismissed with costs of INR 25,000 (approximately equal to USD 320).
It is imperative to note that the definition of the term “any person”, as stated in Section 25(1), has not been specified in the Indian Patents Act. The term “any person interested” as used in Section 25(2) has however been defined in the Act as “a person engaged in, or in promoting, research in the same field as that to which the invention relates”. In this regard, it is also important to mention that previously, Section 25 only permitted filing of pre-grant opposition by “any person interested” once a patent application was “approved and published but not yet granted”. Thus, taking into consideration the 2005 amendment which widened the scope of who can file a pre-grant opposition and a plain reading of the provisions as specified above, it can be understood that the intent of the legislature was that the term “any person” be construed broadly.
However, in the Dhaval Diyora case, the High Court of Bombay prioritized upon the qualifications and credentials of the opponent to file a pre-grant opposition, thus, blurring the differentiation between “any person” and “any person interested”.
As discussed above, the idea behind oppositions is to ensure grant of genuine patents and to assist the Controllers of Patents in examining the patent applications. The aim is not to question the credentials of the opponent, thus, shooting the messenger itself. Interrogating the educational and professional background of the opponent contradicts the aim of the legislature if the grounds of opposition are well founded and justifiable.
To conclude, there is no doubt that filing of a flippant and superficial pre-grant opposition delays the process of grant of a patent. To overcome this problem, one of the solutions could be to amend the opposition law to provide a definite time frame within which a pre-grant opposition can be filed and disposed of. However, in the task of ensuring that the opponent does not abuse the process of law, it is also to be made certain that the gap between Sections 25(1) and 25(2) of the Indian Patents Act, which was deliberately left by the legislator, is maintained.