Time to re-write or clarify the pre-grant opposition rules?

3 Oct 2007

To add to the post below:

The Chennai Patent Office issued the Valganciclovir patent without providing a hearing to the Opponent, despite the fact that the Opponent requested one. This suggests to us that there is a strong case for re-writing or clarifying the pre-grant opposition rules and procedure (Rule 55).

This is not the first time that the rules for pre-grant opposition have been applied inconsistently between the four patent offices. In the matter concerning the opposition against Gilead’s application No. 896/DEL/2002 and 963/DEL/2002, the Delhi Patent Office refused to provide the opponents with Gilead’s response to the opposition. It was only after the matter was taken to the High Court in Delhi that the Delhi Patent Office agreed to provide Gilead’s response. In another matter concerning the patent for Nevirapine Hemihydrate, the same office (Delhi) provided the applicant’s response. In the Gleevec patent opposition, the Chennai patent office applied the post-grant opposition rules whereby the opponent received Novartis’s response to the opposition from the Chennai Patent Office and the procedure/hearing was conducted inter partes.  The Mumbai patent office has been known  to adopt the practice of not passing on the applicant’s response to an opponent in a pre-grant opposition and deciding matters on the papers in front of it.

The problem appears to lie in the wording of Rule 55 and the lack of guidelines for examiners. Based on the wording of Rules 55(3) and 55(5), which state that ‘on consideration of the representation of opposition or response of the applicant, the Controller can either refuse to grant a patent for the application or request amendment’, it would seem that bar a hearing requested by either party, technically the representation of opposition or the application could be  dismissed at either of these points of the procedure by the Controller based on the merits of the opposition/response of the appplicant. It would appear this can happen without any further exchanges between the opponent, applicant and the patent office.

But where a hearing has been requested by either party – then it is difficult to see why the party should not be heard, even if the Controller is leaning towards granting the patent. Otherwise what is the point of providing the right to a hearing in s25(1)? Also, if a hearing is requested, then surely the opponent should be entitled to see the response of the applicant – else what is the opponent going to address at the hearing, his/her own opposition?

It is also worth noting Rule 129, which says that before using any discretionary powers  under the Act or Rules which is likely to adversely affect an applicant or a party to the proceeding, the Controller shall give the applicant/party a right to a hearing. The question here though is whether an opponent to a pre-grant opposition is a ‘party’ to proceedings?

It appears the rules for pre-grant opposition were drafted in a way to make them different from the rules for post-grant oppositions – and possibly to resemble an ex parte/observation procedure (but with a hearing – which is a strange format in itself). But the different patent offices are applying a mixture of the pre and post grant opposition rules, which is resulting in a dysfunctional pre-grant opposition system.

It would make sense to re-write Rule 55 so that it mirrors the post grant opposition rules and avoid this inconsistency and undue discrimination – but more importantly to ensure a stronger patent system for weeding out bad patents prior to grant. Alternatively, if it was not the intention to have the pre-grant opposition procedure be the same as the post-grant opposition, then the rules need to be re-written to clarify this. Otherwise, opponents (and applicants) may gain in one opposition, but be prejudiced in others.

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