A recent order by the Delhi High Court in the case of Agriboard International Llc vs Deputy Controller Of Patents brought up the very relevant issue of the requirement of the Patent office to issue “speaking orders” while rejecting a patent application. Indeed, this is an important requirement and we will look to cover this decision in a blog post soon. However, discussing this case brought to mind the issue of safeguards for ensuring high patent quality. And combined with renewed input from an anonymous reader, we decided to very belatedly put out a 2 part post on a case dealing with pre-grant oppositions, that two of us (Varsha Jhavar and myself) had started writing much earlier last year, but not gotten around to publishing. Without further ado:
Bombay High Court’s Interpretation of ‘Any Person’ under Section 25(1) of Patents Act, Diluting Pre-Grant Opposition.
Can ‘any person’ be understood to mean ‘only some people’? Apparently so, indicates a Bombay High Court order! Narrowing the scope of the right vested under Section 25 (1) as to who can file a pre-grant opposition, a division bench of Bombay High Court on 5 November 2020, seems to have interpreted the phrase ‘any person’ to mean a person with certain educational and professional qualifications. This followed from the IPAB’s earlier order in the same matter, which coined the term ‘benami opponent’, and ‘straw man’ opponent.
Brief background:
On 10 August 2020, the IPAB concluded the hearing for Pfizer’s appeal against an order of the Controller regarding the generic drug tofacitinib. Deciding in Pfizer’s favour, the Board had reserved the order for giving reasons on 21 August 2020. On 18 August 2020, a Mr Dhaval Diyora filed a pre-grant opposition, however the Board refused to take it into consideration as it found the opposition to be not ‘as per the prescribed procedure.’ Aggrieved by this decision, Mr. Diyora filed a writ petition before the BHC against the order.
This is where the issues of current focus start to pop up. Upon Pfizer objecting to the Petitioner being a ‘strawman’, the court had decided to check into the Petitioner’s credentials. They found that the petitioner had a diamond business, i.e., his profession was ‘unrelated’ to the pharmaceutical sector and as he had filed multiple oppositions, held that he was a ‘habitual frontman’. The court on the basis of “totality of circumstances” declared that the Petitioner’s conduct was an ‘abuse of the process of law’ and dismissed the petition with costs of INR 25,000.
There are several issues worth picking apart in the BHC’s order – however for the purposes of this post – we just want to focus on the two issues: 1) How ‘any person’ in 25(1) (pre-grant oppositions) has been interpreted; and 2) the judicial creation of ‘benami oppositions. (Another angle of this case has been discussed in an earlier post. In the same BHC order, the court had also specified that a pre-grant opposition can only be filed before the Controller deciding the patent application, not via appeal before the IPAB – this has been critiqued in an earlier guest post here.)
(Ir)Relevance of Educational and Professional Qualifications
Section 25(1) deals with pre-grant opposition and it provides that ‘where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent’. (emphasis supplied) ‘Any person’ has not been defined under the Act. In contrast, only ‘any person interested’ can file a post-grant opposition as per Section 25(2). There had been an attempt via the 2004 Patent Ordinance to narrow pre-grant oppositions in terms of substance as well as in terms of representation by opposition parties – however this ordinance lapsed and the subsequent bill that replaced it in 2005 expanded it on both these counts, reinstating expansive pre-grants as a necessary safeguard. So, (a) the literal reading of the provision; (b) the contextual interpretation in contrast to S.25(2); as well as (c) the sequence of actions in its legislative drafting from ordinance to bill; all would indicate that it is to be read expansively.
The court instead chose to examine the Petitioner’s conduct, to decide how it should be interpreted. The court delved into his educational and professional background stating that ‘the obvious question is how the Petitioner has intricate knowledge of pharmaceutical compounds when he is a businessman engaged in diamond business.’ (Para 35) It begs mentioning that the purpose of pre-grant oppositions is to ensure that genuinely worthy applications are granted patents and it is to be decided on merits, not on who applies for a patent or who opposes it. So, it must be asked – why does it matter how the knowledge is acquired, rather than whether that knowledge is applicable/ relevant in the present issue or not? Especially in the context of pharma patents which can have far-reaching impacts on society at large! It does not seem fair or logical to examine the qualifications of a person opposing a registration, when a patentee is not required to have a certain technical background in order to apply for a patent grant.
In support of his argument that ‘any person’ can file a pre-grant opposition, the Petitioner cited the Madras High Court’s decision in Indian Network for People living with HIV/AIDS v. Union of India (Indian Network). But the court rejected this, stating that the issues were different, and that the Petitioner in the Indian Network case was a ‘registered Society’. (Para 34). If the issue is indeed benami-frontman abusing the process of law, it’s unclear as to why a registration would mean that this is no longer a problem.
Widened Locus Standi
Very curiously though, in deciding the question of when the pre-grant can be filed, the BHC explicitly refers to the widening effect that the 2005 amendment had on who can file an opposition. As observed by the court in para 20:
“By enlarging the locus standi under Section 25(1), the legislature intends to bring transparency in the proceedings before the Controller. Patents confer a monopoly of use. Some monopolies could be detrimental to welfare measures for the masses. The widened locus standi now permits any person, which can include researchers, non-governmental organisation, to oppose a patent application by submitting information to the Controller in the interest of the society. As observed by the learned Single Judge of the Delhi High Court in the case of UCB Farchim Sa v. Cipla Ltd & Ors. 2, the object of the pre- grant opposition is to assist the Controller in deciding the patent application.” Once again, in para 33, the Court notes that the 2005 amendment were brought in to widen the scope for who was entitled to file a pre-grant opposition and that these were brought in to allow any person to assist the controller in examining the patent application. Yet, somehow the court still reached the conclusion that this widened locus standi must be narrowed!
This reasoning starts to open out when the court explains further, that the ‘widened locus standi now permits any person, which can include researchers, non-governmental organisations’ (emphasis supplied) to become an opponent ‘in the interest of society’. (Para 20) While appearing to confirm a widened locus standi, it is strange for ‘only’ these examples to be given, as they fall squarely within the narrower definition of “persons interested” as given by Section 2(t) of the Act: “ “person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates”. Thus using this as an example is akin to saying something like “India allows for all kinds of IP protection, such as product patents and process patents”. It is technically true, but isn’t clear or useful in acknowledging that India also provides protection for copyright, trademarks, GIs, etc, especially if the question is how wide is the scope of IP protection in India. Similarly, this ‘confirmation’ of the widened locus standi does not really seem indicative of an widened reading of it.
The legislature surely intended to create a distinction between ‘any person’ and ‘persons interested’, but the court through the present order risks voiding this gap.
Click here to view part 2.
“why does it matter how the knowledge is acquired” – is a rather appropriate question. If things go by such narrower interpretation, than those PGOs filed by the public spirited organizations and patient groups should also fall – because there is hardly any possibility that those running thos NGOs or those patenients which form a group or associations would be ‘knowledgable” enough in the filed of pharmaceutical field to ‘qualify’ to file PGO. They are also a ‘frontman’ because they also would have taken help from some ‘knowledgable’ to prepare the draft to file the oppositions.
When the legislation has clearly separated two groups – ‘any person’ and ‘person interested’, there can be no reason why it should be interpreted any narrowly or differenlty. Oppositions can delay prosecution, that is true, but the same is true for almost all juridictions and it is not something peciliar to IPO only.
The pendency at EPO is also quite long – there have been instances where oppotiion proceedings have extended up to nearly 5 years also.
And on the ‘strawman oppositions’ allegation – it is to be noted that not only Pre-grant but the EPO even allows to file post grant oppositions anonnymously and one is not bound to disclose their identity and interest in opposing a granted patent .