What’s in a Name? Taking a look at IPO’s Interesting Observations on Benami Pre-Grant Oppositions

The recent decision of the Indian Patent Office in Suman Das v. Arcelormittal (Application no. IN 201717013441) emphasizes the need to pay attention to the content of the opposition itself instead of focusing on the identity and qualifications of the opponent – a point often repeated in previous posts on the blog (see here, here, and here). Considering that it’s only a tidbit we are not going into the merits of the case and interested readers can refer to the order here. However, I’d like to point out that with so many remands (see here and here) from High Courts back to the Patent Office in the recent past for being non speaking and cryptic, this order is surely a template for how simple, crisp decisions granting or rejecting a patent can be. 

Here, Arcelormittal’s patent application was for a method of producing a specific type of steel sheet. A pre-grant opposition was filed alleging that the invention is not novel, does not include an inventive step, and the invention was not sufficiently disclosed. On the opposition, Arcelormittal retaliated by arguing that the opponent was a “Benami”/ Proxy opponent and the agent had no direct or indirect interest in the matter. Interestingly, Arcelormittal raised a unique allegation against the opposition that the Opponent has not provided “Aadhar Card/Voter ID Card/Passport/Driving License to authenticate its identity.” Now, as per Section 25(1) “anyone” can file a pre grant opposition. Further, no provision under the Patent Act or Patent Rules requires the pre grant opponent to file any identification documents alongside its opposition. 

The Patent Office rightfully disregarded these assertions against the so-called “benami” opposition and clearly differentiated between the nature of an opponent in a pre-grant opposition and a post grant opposition. The Asst. Controller Kundan Kumar (we covered the news of Delhi High Court upholding one of Asst. Controller Kumar’s solid decision previously here) clarified that the Patent Act “grants more power to a common person to file a pre-grant opposition” and thus there is no need for such an opponent to disclose their identity unless mandated by the Controller under Section 77(1). 

Assessing the grounds of opposition, the Asst Controller held that while the opposition failed in establishing that the subject invention was non novel, the opponent successfully raised issues regarding inventive step and insufficiency of disclosure thus rejecting the patent application. The order notes that the Patent Office raised insufficiency of disclosure as one of the objections in the hearing notice, looks like the opposition was crucial in raising the ground regarding lack of inventive step in the invention. 

Another interesting thing that stands out from this order is that once an opposition is successful, the Patent Office is not required to hold further hearings under Section 14 as it would be redundant, thus showing that strong pre-grant oppositions may end up saving the Patent Office time.

The decision by the Patent Office serves as a proper counter to the assertion that seems to be making the rounds (without evidence) that pre-grant oppositions are frivolous and ill-motivated. And clearly showcases the impact of a solid pre grant opposition, exhibiting how it actually aids and assists the Patent Office in examination, and in preventing frivolous applications from being granted monopolistic rights.

H/t to Sandeep Rathod for highlighting this order on his Linkedin profile. Also, thanks Swaraj for his inputs on this piece.