How to destroy an invention — the Patent Office way

Of the myriad ways in which an invention can be killed, the unkindest of them all involves the end an invention suffers at the patent office, the institution established to foster innovation by granting patents.

The patent office has the power to refuse a patent application for an invention and such decisions are appealable: the appeal lies to the Intellectual Property Appellate Board (IPAB). But now, an absurd interpretation of the law has opened an avenue for the Patent Office to render decisions that cannot be appealed: a crass situation where the first decision becomes final.

A decision given by the patent office under Section 25(1) of the Patents Act, 1970, commonly known as pre-grant opposition proceedings, cannot be appealed to the IPAB. A weak substitute for an appeal will be to approach the high court under the writ jurisdiction, where the scope of examination is limited.

This narrow view arises from the interpretation of Section 25(1) by the Supreme Court in J  Mitra Co Pvt Ltd vs Assistant Controller of Patents (2008), where the right of a pre-grant opponent to appeal was considered and rejected. The court took the view that appeals against the order rejecting the pre-grant opposition are not maintainable. This meant that the pre-grant opponent did not have a right to appeal.

The issue of the right to appeal of the patent applicant against an order rejecting its application was not considered.

By a strange amendment, the Patents Act no longer provides for an appeal from an order passed in a pre-grant opposition. By an even stranger interpretation, the IPAB refuses to hear the case of a patent applicant who has suffered a rejection at the hands of the patent office.

All this may change soon, as Gilead Sciences, aggrieved by the rejection of its patent application for its drug tenofovir (Viread), is reported to have knocked the doors of the IPAB.

The power to reject a patent application

To understand why an order passed pursuant to a pre-grant opposition is treated as a non-appealable order, it is necessary to understand the scope of an order passed under Section 25(1).

This section deals with the representation filed by the pre-grant opponent and how the Patent Office shall ‘dispose of such representation’. To take a view that the patent applicant does not have a right to appeal over a rejection of a patent application pursuant to an order under Section 25(1) will amount to agreeing that the controller has the power to reject a patent application under Section 25(1).

Contrary to what is believed, Section 25(1) does not grant the controller the power to reject a patent application. It does not expressly state what happens to the patent application filed by the applicant. It only deals with the disposal of the opponent’s representation.

Viewed this way, the decision of the Supreme Court makes sense as it denies the pre-grant opponent a right to appeal as law vests him with the right to further agitate its case in post-grant opposition or revocation proceedings.

Reading into the power to reject

Section 43 of the Patents Act implies that the rejection of an application by the Controller can be only by virtue of any power vested in him under the Act. The Act confers the power to reject an application under two sections: Section 15 and Section 18. Any rejection of an application, whether expressly mentioned or not, should fall within these two provisions. Though the controller does not have the power to reject an application under Section 25(1), the power has now been read into to the detriment of the patent applicant.

Reading into the power of rejecting a patent application into Section 25(1) can lead to an anomaly. If the rejection of the patent application is based on a cited prior art document, it could lead to two different outcomes based on the provision under which the order is passed. If the order is passed under Section 15, the order is appealable, as Section 117A(2) provides for appeal from orders passed under Section 15. But if on the same set of facts the order is passed under Section 25(1) by the reason that the prior art documents were supplied by the opponent, the order becomes non-appealable.

The nature of pre-grant opposition

The nature of pre-grant opposition has changed over the years. Before the 2002 amendment, pre-grant opposition used to be a proceeding between parties (inter partes proceedings) where the opponent was a formal party who entered appearance on notice by paying the official fee. The 2002 amendment to the Patents Act brought a drastic change to this nature. While it introduced a post-grant opposition, which now looks very similar to the earlier pre-grant opposition procedure, it also re-introduced a summary, refined procedure of pre-grant opposition where the opponent need not be a party to the proceedings.

Pre-grant opposition now stands democratised. The new pre-grant procedure allows any person (earlier it used to be an interested person) to informally write to the controller (no particular form or procedure need to be followed) and inform why a particular application should not be granted a patent (again no expert affidavit or any other kind of legally admissible evidence is mandated).

The new procedure does not treat the pre-grant opponent as a party to the proceeding: there is no fee for filing opposition, no procedure for hearing the opponent, and no appeal if the opposition fails.

The new procedure innovatively shifts the burden of proof on the applicant, who has to show why the application should be granted a patent in the light of the objections raised by the opponent. All this is in tune with the greater objective of granting patents efficaciously.

Any rigour in the procedure could lead to pre-grant opposition becoming lengthy affairs like what post-grant oppositions have now become. The new procedure gives the controller a great degree of discretion in deciding the opposition. With great discretion comes greater accountability, and hence to consider the rejection of an application by the controller as a non-appealable order may lead to systemic abuses.

Finality of first decision

For a variety of reasons, the Indian patent system has attracted the wrong kind of attention from the world around. Not rendering a patent applicant an effective right to appeal to a specialist appellate forum will be yet another dubious distinction which can be avoided. In the absence of a remedy in appeal for the patent applicant, the order of the controller becomes final. And that could be a death sentence for many inventions.

The writer is a Chennai-based advocate