Patent Pre Grant Opposition- Appeal Against Order

• Published date: 11 June 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: S.S. Rana & Co. Advocates
• Author: Mr Vikrant Rana, Priya Adlakha and Rima Majumdar

Over the years, much controversy roamed around the provisions and remedies to challenge the order passed by the Controller General of Patents, in a pre-grant opposition under the Patents Act, 1970, as amended from time to time.

As per the Patents (Amendment) Act, 2005 (hereinafter referred to as 'the Act'), , a patent application can be opposed at two stages, one at the Pre-Grant stage i.e. before the patent is granted and another is at Post-Grant opposition i.e. after the patent is granted.

For the purpose of ready reference, it is briefly mentioned that Section 25 (1) of the Act provides grounds for a Pre-Grant Oppositions by anyone, Section 25(2) sets out grounds for a Post-grant opposition by person interested, Section 25(3) deals with constitution of Opposition Board and examination of the Pre-Grant Oppositions and Section 25(4) deals with the Power of Controller to pass order either to maintain, amend or revoke the patent.

Under the Amendment Act of 2005, right to appeal was only given to sub-clause (4) of Section 25, as it stood then. Furthermore, some sections of this Amendment were brought into effect on January 01, 2005 itself. However, the amended Section 116 and 117A were brought into force on April 02, 2007.

Section 15 of the Act, also deals with refusal and amendment of a patent application at a Pre-Grant stage i.e. 'Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.'

Discussion in this article is limited to the provisions and remedies to challenge the order passed by the Controller under Section 25 (1) of the Act in pre-grant opposition proceedings.

APPEAL AGAINST ORDER REFUSING PATENT

Chapter XIX Section 117A of the Act deals with 'Appeals to the Appellate Board', which now stands replaced with 'Appeals to the High Court' by virtue of the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021, published in the Gazette of India dated April 4, 2021, which abolished the Intellectual Property Appellate Board (IPAB). By a subsequent notification, it is clarified that IPAB is abolished with effect from April 04, 2021 itself.

Sub Section (1) of Section 117A of the Act starts with an exclusion clause that 'Save as otherwise expressly provided in sub-section (2), no appeal shall lie from any decision, order or direction made...