Opponents in pre-grant oppositions to be given access to responses by patent applicants

9 Aug 2008

In an important development reported by the Hindu Business Line, the Controller General of the Indian Patent Office has issued an administrative instruction that all opponents in pre-grant oppositions are entitled to receive responses/evidence filed by patent applicants.  In order to receive an applicant’s response, the opponent must make a written request to the patent office and pay the required official fee.

I-MAK first raised this  procedural issue in an earlier post  last October and subsequently in its submission to the Parliamentary Standing Committee on Improving the Patent System. The Federation of Indian Chambers of Commerce and Industry (FICCI), which has helped considerably to improve the Indian Patent Office system, consulted us on this problem and has successfully helped to push for this much needed clarification in the pre-grant opposition procedure.  Allowing pre-grant opponents to be furnished with the applicant’s response will certainly help improve the effectiveness of the procedure and improve patent quality.

However, the fact that opponents have to make a request in writing and pay an official fee before getting access to the applicant’s response is an unnecessary hurdle and tempers the new administrative instruction. Installing such a requirement serves to make the procedure impractical and likely to cause a time disadvantage to opponents given the delay it takes to receive information from the patent offices.  For example, when will an opponent know if the applicant has responded if he/she
does not automatically get a copy of the response? Will the patent
office alert the opponent that they have received the applicant’s
response and that the opponent can apply for a copy? Has Rule 134 been changed to allow opponents to get status reports on pre-grant oppositions so that they know when to make the request? At the last time of asking, the Delhi Patent Office told us that because Rule 134 does not list patent opposition status (including when an applicant has filed a response)  as an item of information that can be requested, they cannot make it available. This is the case even if you are the actual opponent in a matter! This requirement of making a written request and paying a fee for the applicant’s response goes against the very basis of evidence exchange in opposition systems, especially those which allow for hearings between parties.

Moreover, if as reported in the Hindu article the procedure was clarified to incentivise use of the pre-grant opposition procedure (to date around 300 pre-grant oppositions have been reported – companies citing the inconsistent application of the rules in this context as a reason),  incorporating this additional layer does not help streamline the procedure. The Indian Patent Office would  do well to remove this requirement if it wants to make pre-grant opposition a viable tool.

In addition to the above, and as mentioned in our earlier post, further clarification of the  pre-grant opposition Rules 55(3) and 55(5) is still required.  Can an examiner issue a final decision without hearing an opponent if a hearing request has been made? This is another point of contention and application of these Rules have been applied inconsistently within the patent offices – the Valganciclovir opposition being a case in point. We hope the FICCI can help push the patent office to clarify this point too.

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