October 27, 2006

Is the Opponent a Party to the Pre-grant Opposition Proceedings

I have consistently canvassed a proposition, much to the chagrin of legal puritans, that an opponent in a pre-grant opposition is not a party to the proceeding. In strict legalese it means that a pre-grant opposition proceeding before the Controller is not a proceeding inter partes. Though a bare reading of section 25(1) of the Patents Act, 1970 gives an impression that pre-grant opposition proceeding is between the applicant and the opponent, the details in the Act and the Rules point to the contrary. For starters, pre-grant opposition proceedings are entertained in the application stage where third parties cannot, and need not, be regarded as essential parties to the proceeding. For the reasons stated below, pre-grant opposition procedure can at best be regarded as a procedure to take into account the case presented by an opponent who is not a party to the proceeding and nothing more.

Firstly, a pre-grant opposition, though initiated by a third party, will be regarded as an extension of the application procedure as the opposition takes place before the grant of the application. For this reason, pre-grant opposition will be treated as a proceeding involving the Controller and the applicant. The role of the opponent is merely to supply information to the Controller. In fact, the power of the Controller to revoke and amend the patent is conferred under section 15 which may be exercised even without a pre-grant opposition. In other words, the outcome of the application can be the same even without an opposition.

Secondly, a brief comparison between the procedures of pre-grant and pos-grant opposition gives an unmistakable impression the pre-grant opposition proceedings are not intended to be a proceeding between parties. Unlike post-grant opposition where an opponent becomes a party by filing his notice of opposition in Form 7, pre-grant opposition requires only a written representation and as such there is no procedure by which the opponent can officially enter into the proceedings. In a country where things become 'official' on the payment of fees to the Government, the status of an opponent remains obscure as there is no fee for filing a pre-grant opposition. Furthermore, there is no specific provision similar to rule 63 by which an opponent can be eligible for costs of opposition.

Thirdly, the mere fact that a representation is made by the opponent in pre-grant opposition will not oblige the Controller to act upon it. The opposition will be entertained only 'if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment'. The applicant will be informed about the opposition only if the Controller, in his opinion, is satisfied about the merits of the opposition.

Fourthly, the opponent will not be entitled to know the defence of the applicant in pre-grant proceedings. Unlike the procedure for post-grant opposition, the Act and the Rules do not detail the manner in which an opponent can get information about the applicant's defence.

Finally, as argued earlier, though an applicant can prefer an appeal from the order of the Controller in pre-grant opposition proceedings, there is no corresponding right of appeal for the opponent.

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