Ms. Sri Soniya – Intern Intellectual Property Rights Practice
A Comparative Study
Introduction
Patent opposition frameworks tend to act crucially in challenging the validity of patents without
burdening the courts. India happens to be one of the very few countries across the world which has a
robust pre- and post-grant opposition regime. While such a framework is notable due to its intention to
protect public interest and ensure patent quality, a deeper understanding of practical realities reveal
criticisms. The Indian patent framework encompasses Sections 25(1) and 25(2) under Patents Act, 1970
(hereinafter referred to as ‘The Act’) which governs the pre-grant and post-grant opposition
mechanisms. While both aim to filter weak, invalid and evergreened patents, both are structurally
different. Therefore, the prominent question at this juncture is whether such provisions are truly a
democratic safeguard or merely give way to litigation tactics to delay patents and thereby cause
inconvenience to the patentee. This article examines the design and operation of such oppositions,
situates it within the context of international practices and governances, and explores whether these
provisions are assisting innovation or inadvertently becoming tools that cause delay, abuse and
uncertainty.
Patent Grant Opposition Framework in India
While we know that there are pre-grant and post-grant opposition practices, there are stark differences
between the two as established by the Bombay High Court which has held in 2022 that “post-grant is
no substitute for pre-grant procedures.1” A pre-grant opposition is allowed to be filed under Section
25(1) of The Act at any time after publication of application but before patent grant, whereas a post
grant opposition filed under Section 25(2) is required to be filed within a period of one year of grant.
The 2005 Amendment further granted allowance to ‘any person’ to file an opposition during the pre
grant stage, but a post-grant opposition is to be filed only by ‘any person interested’. The court has
further attested to the fact that the pre-grant oppositions act “in the aid of the examination” of the patent
application by the controller, but it has established both to be different procedures independent of each
other2.
The intent of these procedures are uncontested for they provide an administrative alternative to
expensive litigation processes, protect public interest especially in sensitive patents such as
pharmaceuticals, and allow the public to transparently participate in the patent granting process. What
is to be questioned instead is the necessity of two such filter mechanisms which predominantly intend
to produce the same output.
It is to be noted that the pre-grant opposition has no threshold, any person devoid of any connection or
interest may file an opposition. Such a low threshold is highly prevalent to inviting frivolous or
competitive challenges aimed to delay rather than truly question the validity of the patent. For instance,
in a 2020 writ petition filed in Bombay High Court3, the Court held a pre-grant opposition to be not
maintainable in law as he was considered to be habitual objector.
1 MANU/MH/4797/2022
2 MANU/DE/0109/2023
3 MANU/MH/1879/2020
“That the Petitioner has filed multiple oppositions does take his case further. It can
also mean that he is habitual. Considering the totality of the circumstances, we have
serious doubt about the credentials of the Petitioner and find merit in charge of the
Respondent no.4 that the Petitioner is a habitual frontman put up by those who
intend to only delay the grant of patents.”
Additionally, opposition proceedings may require disclosure of specification details which would
unfairly advantage competitors and provide them opportunity to refine their R&D. Repeated
oppositions will endlessly extend examination resulting in uncertainty, creating a similar situation as to
courts – rendering a separate opposition framework such as the current one useless.
Comparing the Contours of Patent Oppositions
While we understand how the Indian patent framework works and criticise it on various fronts, it is
imperative to gain perspective of similar structures in other countries to prudently evaluate India’s
approach in this regard.
A. Pre-Grant Only Frameworks
Let’s take two countries, Thailand and Australia to discuss a scenario where there exists only
pre-grant opposition.
In Australia, third parties are allowed to challenge the grant of a standard patent within three
months after acceptance has been advertised in the Australian Official Journal of Patents, run
by IP Australia. Clearly, there is no specification as to who shall file a notice of opposition and
hence, such a provision is similar to Indian pre-grant opposition. Another observation to be
made here is that despite being an only pre-grant opposition system, the time provided for such
opposition is limited, whereas in India the pre-grant opposition can be filed at any time from
the time of publication of the Patent in the Journal and before the grant. This is indicative of
Australia’s higher procedural discipline which prevents frivolous challenges due to high costs
and evidentiary burden.
Thailand is a close parallel to India in economic terms, yet it adopts a pre-grant only opposition
model. As per Section 31 of Patent Act B.E. 2522 (1979), when an application for a patent is
published in the Thai Patent Gazette, opposition can be filed within 90 days if ‘one believes
that they are entitled to a patent or if the said application does not comply with certain
provisions’ of the Patent Act. Hence, it establishes a restriction on who can file opposition,
which is absent in both India and Australia (as previously discussed). While there is possibility
of post-grant challenges, they are to be routed through courts and do not fall under
administrative opposition. This essentially means that once the pre-grant opposition timeline
expires, the threshold for later challenge becomes extremely high and expensive. Essentially,
this system places great responsibility on pre-grant mechanisms to regulate the patents in the
country and reduces flexibility for later correction.
B. Post-Grant Only Frameworks
Now, on the other side of the spectrum lies Europe and the United States which do not allow
pre-grant opposition, per se, instead have Pre-Issuance submissions, at anytime before the
notice of allowance or after 6 months from the date of publication, challenging the Novelty and
non-obviousness of the Patent Application.
Europe’s opposition framework is managed by the European Patent Office. Herein, “any
person” without any restriction is allowed to oppose a patent within 9 months of the publication
of grant of said patent in the European Patent Bulletin. The Office further limits frivolous
oppositions by providing a defined category of grounds for such opposition including
patentability of subject-matter, insufficient disclosure and the like. Its decisions also have the
effect of centrally binding all the member states, resulting in a structurally disciplined and
commercially certain region with high-innovation and high patent density.
The U.S. inter partes review is a post-grant opposition mechanism which was only introduced
in 2012 through the Leahy-Smith America Invents Act (September 16, 2011). It is quite similar
to the European patent framework, for it also provides a duration of 9 months after patent grant
to oppose the same. The review is conducted at the Patent Trial and Appeal Board (PTAB), and
again there is no specification as to whom shall file notice of opposition for it merely uses the
term – “third party”. It seems to be the case that only few countries have set limitations in
regards to ‘who can file an opposition’, U.S. by refraining such a restriction appears to increase
the transparency and effectiveness of the entire process.
Why Opposition Models Differ
Opposition frameworks adopted by countries are deliberate policy choices shaped by their economic
and industrial framework. A clear pattern emerges from the above comparisons. First-world economies
with a dominant innovation standard such as the U.S. and Europe, favour post-grant oppositions to
allow for speed and certainty. The demand that accompanies a patent-dense economy requires fewer
yet stringent regulations to manage the filtering process. When it comes to emerging economies which
are patent-sensitive, a pre-grant or hybrid model might be more favourable to prevent weak patents
from defining the markets prematurely. It shall require proper administrative scrutiny and transparency
to move towards an innovation leadership.
India’s opposition mechanism is particularly suited to its historical and economic positioning. The pre
grant opposition framework allows “any person” to challenge a patent, reflecting a public-interest
centric philosophy – one that acknowledges the existence of traditional knowledge which the patent
examiners might not be exposed to. It acknowledges the importance of involving everyone in the patent
process in order to effectively weed out any weak patents thereby establishing a well-structured quality
control mechanism especially when combined with its post-grant opposition mechanism which acts as
a double-filter mechanism. Such a hybrid system further acts as an enabler when there is a strained
examiner-to-patent application ratio, ensuring that only qualified and valid patents are granted approval.
Argentina on the other hand presents a notable counterpoint in this comparative patent framework for
it does not provide for a third-party opposition mechanism, either at the pre-grant or post-grant stage.
While a third party may submit their observations on the patentability of an invention, they shall not be
involved in the process. Consequently, such a framework places a burden on the examination conducted
by the National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial,
commonly known as INPI) thereby prioritising administrative gatekeeping over participatory scrutiny.
Conclusion
Oppositions may delay grant and provide undue advantage to competitors and low thresholds for such
oppositions may encourage frivolous challenges, for in practice oppositions are increasingly motivated
by rivalry rather than quality concerns. But in India, third party scrutiny acknowledges gaps in
examiners’ knowledge, thereby improving quality control. Hybrid opposition framework offers
multiple checkpoints which benefit emerging economies such as India to establish a reliable innovation
market. Until now the procedural framework reflected the historical needs of India, but with increasing
patent filings, technological development and global acknowledgement, there is a demand for
procedural recalibration. This may be done through strict establishment and following of laws in regards
to consolidated hearing of pre-grant oppositions, sanctioning abusive or repetitive oppositions and
barring revocation of post-grant opposition on the same grounds before a court thereby guaranteeing
ease in handling of challenges, reduction in frivolous complaints and coordinated adjudication overall.
Ultimately, it is not a decision between scrutiny and speed but rather a framework which does not merely
ensure rigorous patent quality but also allows expansion of innovative standards and opportunities.
