In Novartis AG v. NATCO, the DB of DHC had to determine the “extent of engagement of pre-grant opposition in the course of proceedings initiated by Controller requiring the applicant for a patent to amend or modify the application, the complete specification thereof or any other related document”. In other words, whether the pre-grant opponent has a ‘right to hearing’ during the “examination” process. The court in this case sought to balance the need for rigorous examination with the need for expeditious conclusion of patent application. Notably, among other things, the court has pinned the blame for delayed examinations on the abuse of ‘no time cap’ on pre-grant opposition (PGO). The issue of delays in examination and PGO have been dealt with here and here. As these posts point out, the blame cannot be pinned on any single factor. Rather, it emits out of a flawed system. Following this line, the court advises the Controller to ‘formulate’ and ‘structure’ measures to facilitate speedy consideration of patent applications.
Does the present case adequately balance the ideas of opposition and examination? Or does it miss the wood for the trees? In this post, I will discuss the findings of the court as regards the relationship between the process of examination and opposition. I will further analyze the implications of the judgement on the “expedition” of the patent examination process.
Examination and Opposition
As a background, to understand the process of examination and opposition in the Patent Act readers can refer to the table below :-
| Examination | Opposition |
| Can be requested at the instance of the applicant u/s. 11B. | In “opposition”, u/s. 25, ‘any person’ can ‘represent’ opposition against the grant of patent to the application on the grounds mentioned thereunder. |
| Examiner mandated to make a First Examination Report(FER) u/s. 12 specifying whether the application is in conformity with the act, specifying grounds for objection against grant of patent, ascertaining whether the claim is anticipated by publication u/s. 13 and any matter prescribed by the controller | Here, third parties, including parties interested, are eligible to file opposition before the Controller. Upon request, the opponent will be provided representation. |
| The First examination report (FER) is placed before the controller, who, in turn, u/s 14 ‘shall’ communicate the objections to the applicant and provides an opportunity of being heard | Under Rule 55(3) of Patent rules, the process of a hearing begins only when the Controller is prima facie satisfied upon representation that issues raised warrant rejection of application or amendment of specification. |
| Further, sec. 15 empowers the Controller to suo motu direct amendments to the application. | U/s. 55, an opposition can be dismissed summarily if controller is satisfied no substantial question is raised. |
Fair Balance b/w Opposition and Examination
The court, in this case, sought to “balance the need for rigorous examination and task of including various perspective in the decision-making process”. In the court’s opinion, the same can be achieved if a fair balance is struck between representation for PGO and examination.
It said that the examination and opposition process are “separate” and “parallel”. Patent examination was held to be an autonomous statutory process which is intended to be an “assessment and appraisal undertaken by the Controller on its own motion for determining whether the patent is liable to be granted or not.” The court held that the process is not ‘adversarial’ to the Opposition process since the Controller is under a statutory duty discharge the function irrespective of the merit of the objection or even when no objection is raised.
The objection process, court said, was also non-adversarial since it merely contributed to the overall assessment of the patent application. The right to hearing u/s. 25(1) r/w Rule 55 is ‘tethered’ to the grounds raised in opposition only. The rejection of the opposition by the Controller is not itself determinative of the patent application. Rather, even after rejecting opposition, the Controller can reject the application on grounds other than those raised in opposition. The court observed that it is unimaginable for someone to request hearing on a ground which they have not urged or raised. Based on this, it concluded that the right to hearing is only limited to PGO and does not extend to the examination process. Looking at the mandated process, if the court is satisfied, it will accord an opportunity to the applicant to file ‘statement of opposition and provide an opportunity to be heard to the opponent. Upon consideration of the representation and statement filed, the Controller may require the complete specification or other related documents to be amended. However, would this mean that hearing an opponent is a one time affair and the opponents will not be heard after any amendments? Clarifying this, the Court in Para 114, held that to examine whether the amendments remedy the opposition raised under Sec. 25(1) r/w Rule 55(1), controller is obliged to place the objectors on notice and afford them an opportunity of being heard.
The above findings overturn a Single Judge Bench order which upheld the ‘theory of convergence’. There, the court had held that once an objection is raised under Sec. 25(1), the proceedings converge since “pre-grant opponent cannot be kept in dark about the proceedings taking place in the examination process”.(here) Therefore, according to the court, it is important to have the pre-grant opponent involved in the decision-making. Swaraj and Praharsh have explained this issue in detail here.
Where did it source the reasoning? It relies on Rule 55(3) to (5) of the Patent Rules to reason that it requires the participation of opponent in the proceedings since a notice is required to be given to pre-grant opponent. Even in cases where the objection is raised by the examiner or Controller, u/s. 55, the Controller will have to hear both the parties. Why? Because 55(5) requires Controller to decide after considering representation of the opponent.
The above reasoning has been assailed by the DB since it (mis)applies the principles governing opposition proceedings to examination proceedings, which, in fact, are independent and distinct exercises. The opposition exercise is merely to facilitate examination but at no point the two converge.
Natural Justice and Expediency
The concern of the Single Judge bench in providing the opponent with a right to hearing during examination seems to be principles of natural justice. For court, during examination, the examiner or Controller are raising objections, which, in turn, the applicant is remedying without any representation from opponent. Here, the DB clarifies this concern. It notes in Para 128(N) that examination is concerned with ‘assessment’ and ‘evaluation’ of the application which is not dependent on any objection raised. Since there is no requirement of hearing, there is no question of denial of such right. On the other hand, the principles of NJ are applicable when Controller takes cognizance of opposition. A person is not deprived of the opportunity to oppose the grant nor does the rejection of the objection result in automatic grant of patent. Rather, opponent is able to claim a right to hearing compliant with principles of NJ.
Additionally, the DB judgement ensures that applications are not ‘inordinately delayed’ by objections being filed in the examination stages which is supposed to be a separate exercise. It is important to highlight that delay in PGO occur because of ‘faulty’ examination process wherein both the patent officers and applicant are liable to be blamed.(here) Therefore, regardless of the above findings, efficient changes are required within the the examination system for effective changes. The court observed that appeals against post grant opposition under 117A would lie before the HC whereas no avenue for an appeal against a pre grant opposition is envisaged. To resolve this, the court seemingly relies on the alternate remedy of Post-Grant Opposition under 25(2) and reiterates at multiple places that an “interested party” can approach the Patent Office u/s 25(2) even after the grant of a patent (interested readers can check out the long trail of comments on this issue in this post by Kruttika Vijay). However, one can surely be apprehensive that this alternate remedy is not an effective one and is subjected to its own separate set of problems (for instance see here).