Filing post grant patent opposition proceedings in India: A comparison with US & Europe

By Rajiv Choudhary, Partner, Halder & Associates

Introduction: This article provides a summary of the Indian post grant patent opposition procedure and compares it with European and United States provisions. Today’s patent applications are multi-jurisdictional and are prosecuted in different jurisdictions. As such, companies and defendants face the prospect of litigating or defending these patents in different jurisdictions. This article examines the key similarities and differences between Indian, European and United States patent opposition proceedings.

The Indian Patent Act (“Act”) like the European and United States substantive patent legislations provides for post grant opposition proceedings.  Under the Act, these provisions are of two types: the first provision is under Section 25(2) of the Act and is called as post grant opposition proceeding and can be filed within one year of date of grant of patent; and the second provisions is provided under Section 64 of the Act and is called as a revocation proceeding and can be filed any time after one year of date of grant of patent.

Who can file a revocation petition / post grant opposition: Under the Act, only a person interested can file a revocation petition or a post grant opposition proceeding. The Delhi High Court in Ajay Industrial Corp. v. Shiro Kanao of Ibraki City,  MANU/DE/0464/1983 held that “[A] person interested within the meaning of Section 64 must be a person who has a direct, present and tangible commercial interest or public interest which is injured or affected by the continuance of the patent on the register.”

In Galatea Ltd. and Ors. Vs. Diyora and Bhanderi Corporation and Ors. MANU/GJ/0089/2019, the Gujarat High Court held that “[A] person interested would include a person who has a direct, present and tangible interest with a patent, and the grant of the patent, adversely affects his above rights. A person interested would include any individual who desires to make independent use of either the invention itself (which has been patented), or desires to exploit the process (which has been patented) in his individual production activity. Therefore, the term “any person interested” is not static. The same person, may not be a “person interested” when the grant of the concerned patent was published, and yet on account of his activities at a later point in time, he may assume such a character or disposition. It is, therefore, that Section 64 of the Patents Act additionally vests in “any person interested”, the liberty to assail the grant of a patent, by seeking its revocation.

The Intellectual Property Appellate Board (“IPAB”) in Sankalp Rehabilitation Trust v F Hoffmann-La Roche, decided Nov. 02, 2012 held that a wider interpretation should be given to the words “person interested” in view of public interest. The IPAB held that as the Act includes “a person doing research” in the definition of “person interested”, an interest that is an academic one and not necessarily commercial, and when the Act only uses the word “includes”, which is a word that is not restrictive (Ajay Industrial case). The IPAB further held that public interest “is a persistent presence in intellectual property law and will not melt into thin air, nor dissolve”.

Given this background, it is reasonable to assume that a proxy might be able to file a patent revocation / opposition in India.  There are no published cases on the issue directly but this issue was raised in 21^st Century v. Telefonaktiebolaget LM Ericsson, where 21^st Century, a distributor of Micromax, had filed revocation petitions against Ericsson’s patents. However, the revocation petitions were later withdrawn and hence there was no occasion for the court to rule on this issue. See court order dated 07.07.2015 in CS (OS) 442 of 2013 as relates to IA Nos.3204 & 3205/2014.

Europe: In Europe, the issue whether a straw man may file a revocation petition has been decided by the board of appeals in G03/97 / Indupack:  [T]he EPC does not require that the opponent must have a personal interest in the outcome of the opposition proceedings.

“…..[T]here could be a wide variety of reasons why a person with an interest in the revocation of a patent might not want to act openly as a party in opposition proceedings, without these reasons necessarily having anything to do with the patent proprietor.”

United States: The United States has two different types of review: Post Grant Review and Inter Partes review.  The US does not allow for straw man actions; See RPX Corp. v. VirnetX Inc. United States Patent Trial and Appeal Board decision June 5, 2014, IPR2014-00171.

The table below provides a summary of the post grant opposition procedure in three jurisdictions (India, Europe and US).