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May 10, 2021

Court Case Bulletin (CCB): Pre-grant Opposition to Patent Cannot be Filed After the Final Order of the Controller

Author: Intern - Surbhi Nautiyal

In the matter of Dhaval Diyora vs. Union of India & Others [Writ Petition (L) No.3718 of 2020], a two-judge bench (Hon’ble Nitin Jamdar J., Milind N. Jadhav J.) of Bombay High Court vide an order dated November 4th 2020 held that a pre grant opposition to a patent application cannot be filed after the Controller has given its final decision.

In this matter, the Controller had rejected the patent application of Pfizer Inc. (Respondent No. 4), against which Pfizer filed an appeal before the Intellectual Property Appellate Board (IPAB). The IPAB concluded the hearing in appeal on August 10, 2020. The Petitioner filed pre-grant opposition on August 18, marking copy to IPAB. On August 21, the IPAB pronounced order granting patent to Pfizer. The Petitioner filed a writ challenging IPAB’s order of August 21. Petitioner contended that Section 25 (1) of Patents Act, 1970 permits any person to oppose the grant of patent by way of pre-grant opposition “where an application for a patent has been published but a patent has not been granted”, and that unless a patent entered in the Register it is not granted. Petitioner argued that IPAB, being aware of the pre-grant opposition, could not have ordered the grant of patent without first hearing and disposing the opposition on merits. The Respondents argued that the filing and adjudication of pre-grant oppositions is restricted to the stage when the application is pending before the Controller, and the appeal is not a continuation of such proceeding.

The Court observed that the scheme of pre-grant opposition under the Act is limited to the Controller and held that “the right under section 25(1) of pre-grant opposition starts when the Patent is published and continues till the matter is decided by the Controller but no further”. As per the Court, the Controller was functus officio on the date of filing of the pre-grant opposition. The Court also upheld an earlier finding that “sealing of patent and entry of patent in the register are ministerial acts.

The Court took notice of the fact that the petitioner had not filed any pre-grant opposition before the Controller’s final order in 2015 and observed that “if after the order of the tribunal, which is to be implemented by the Controller, the Controller entertains pre-grant applications; it may give rise to an endless series of oppositions”. The Court dismissed the writ petition with costs and held that the pre-grant opposition is not maintainable in law.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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