Pre-grant and Post-grant Opposition by same parties - strategy and impact

There is an interesting angle to Application # IN/PCT/2000/00084/CHE. This Application was filed by Applicant on 22nd May 2000. A pre-grant opposition was filed on 22nd July 2005. A hearing for this pre-grant opposition was called for 12th July 2006.

The Opponent relied on following key grounds:
a) Applicant not entitled to claim priority since the priority documents come from period before India becoming member of PCT.
This argument was rejected by the Assistant Controller as he held that the International filing date of the Application is subsequent to India becoming a PCT member state.

b) Anticipation on grounds of Applicant’s own earlier filing US 5382600.
This argument too was rejected by the Controller as the current Application was a formulation / composition invention which was not disclosed at all in the ‘600 patent.

c) Some claims being vague/ indefinitive:
The Applicant traversed this ground by amending his claims- which amendment was found acceptable to the Controller.

d) Lack of utility:
This ground was rejected as the utility was clearly discussed.

e) Not an invention u/s 2(1)(j):
This ground was rejected.

f) Not patentable u/s 3(d) as combination of known substances:
Ground rejected as the Controller felt that the amended claims do not contradict the provisions Section 3(d) and Section 3(e) of the Patents Act.

g) Method of treatment not allowable:
Argument accepted and Method claim deleted.

In the pre-grant decision, while allowing a majority of the amended claims, the Controller also noted that ‘No appeal lies with the Appellate Board’.

The Application subsequently matured into patent IN211539 on 14/Dec/2007.

The pre-grant Opponent, being impacted by the grant, filed a post-grant opposition on almost same grounds and using same arguments. The Patentee, timely, filed its reply statement and evidence. Subsequently, the Opponent neither filed reply evidence nor attended the hearing. The Patentee attended the hearing.

The Opponent's attitude did not unnoticed by the Controller. While rejecting the post-grant opposition, the Controller wrote in his post-grant decision:

“…Post-grant opposition can be filed only by the 'interested person'. In the present opposition the Opponent claimed as an interested person for filing the post grant opposition, but not shown any interest thereafter. It appears that the interest of the opponent is to utilize the provisions of the Patents Act to present the opposition in this office but failed to continue with the proceedings. The purpose of the provision in the Act is defeated when the opponent failed to continue with the post-grant opposition proceedings.

This is not a 'pre-grant' opposition where any person can provide information to the controller to decide the fate of the case, but in the much restricted post-grant opposition the opponent should involve all further proceedings till the disposal of the opposition.

It appears that the Opponent is a 'person interested' only for the purpose of mere filing opposition, but not really a 'person interested' to oppose the patent. It is pertinent to mention that the Opponent is also opposed the grant of patent u/s 25(1) of the Act with similar grounds. This kind of approach of the Opponent unnecessarily put more workload on the patent administration, which also creates a suspicion on the Opponent for misusing the provisions of the Act. The Opponent should stop this sort of practice in future at least in the post-grant stage for smooth running of the administration.”

Interestingly, while the Controller was clearly not happy with the Opponent’s conduct, he did not pass an order for costs.