Contentious matters under the Patents Act, 1970 are governed primarily by Section 25 and section 64 of the Act. These two sections enumerate the specific and exclusive grounds available to challenge a patent/application for patent under the Act. Here I would like to draw out a contrast between these two seemingly similar set of provisions (sets of grounds). As per the Act, there are three ways to place a challenge against a patent / application for patent – pre-grant opposition; post-grant opposition; and revocation of patent. A pre-grant opposition could be filed by any person from the date of publication of the patent application uptil technically the date of grant of patent on any of the grounds enlisted in section 25(1). The post-grant opposition could be filed only by any ‘person interested’ within one year from the date of publication of the grant of patent on any of the grounds enlisted in section 25(2). Apart from the fact that a pre-grant opposition could be filed by ‘any person’ and a post grant opposition could be filed only by a ‘person interested’, the grounds available for pre-grant [25(1)] and post-grant opposition [25(2)] are ditto. I therefore will treat these grounds available for opposition as a single set of grounds against the set of grounds of revocation available under section 64. The revocation can be filed by any person interested or Central Government from the date of grant of patent till the expiry of patent. Section 25 provides for 11 grounds [(a) to (k)] of opposition whereas section 64 provides for 17 grounds [s. 64(1)(a) to (q)] for revocation of a patent (see here for the The Patents Act, 1970 and The Patents Rules, 2003). Here I will try to chalk out a comparative analysis among these two sets of available grounds and will also try to deduce the possible reasoning behind introduction of such changes.
COMPARISON:
1. Section 25(a) provides for wrongful obtention of the ‘Invention’ (or any part thereof) as ground for opposition. This ground probably touches section 6 of the Act which identifies the ‘Persons entitled to apply for patent’ viz. true and first inventor(s), its/their assignee(s) or legal representative(s). There is however a situation in which the applicant doesn’t lie within the ambit of section 6 as a person entitled to apply for patent and still has not wrongfully obtained the invention i.e. where the person is although a true inventor but not the first one [note the requirement is ‘true and first inventor’ (which raises some doubt as to whether India is actually first to file country? I will try to cover this aspect in a subsequent post.)] and has invented separately but just after the true and first inventor. In such case, this ground of opposition is not available. On the other hand, if the person has wrongfully obtained the invention, it certainly is not entitled to apply for patent. It must be noted that atleast for pre-grant opposition, this ground could also be invoked by ‘any person’ (and not only interested person), and there is not much logic in making this ground available for a person who is not actually the proprietor or person interested in the invention. This seemingly harmless ground of opposition available to ‘any person’, therefore, could theoretically be used a tool to harass the applicant to prove its title over the invention and in particular cases that the claimed inventor is the true and first inventor of the invention. The corresponding provisions for revocation under section 64 are section 64(b) and (c), wherein the section 64(b) also correlates directly to section 6 while providing the applicant of patent not entitled under the Act to apply for the patent as being a ground for revocation [this ground of revocation, therefore, is also available against the patent granted to the hypothetical true but not the first inventor]. Interestingly, there is another provision – Section 64(c) – which provides for a similar remedy and makes wrongful obtention of the ‘Patent’ (and not the invention) in contravention of the rights of the petitioner as a ground for revocation. Although it seems to encompass section 64(b) within its ambit, it is much wider in its scope and its applicability; and also as per the principles of interpretation of the statutes, it must be presumed to be not completely redundant vis-a-vis Section 64(b). It appears that the word ‘Rights’ in the phrase ‘contravention of the rights of the petitioner’ are not limited to the rights within the Act and are also not limited to being the ‘Rights’ of the Inventor (or person entitled to apply for patent). The right could therefore be a right under any other statute or under common law and could be invoked by any person interested. It is presently difficult to hypothesize the situation in which a person (not in the category of persons entitled to apply for patent under section 6) could first prove its interest and then its rights which are contravened by the patentee to wrongfully obtain the patent and more so such ground being allowed to the extent to revoke the patent. If we confer a strict interpretation to the term ‘wrongfully’ to include anything which is not in compliance with any provision of the Act, then we may come across a situation wherein the Controller had demanded the applicant (during the prosecution of the patent application) to insert a reference of another patent(s) under section 19 of the Act which was not complied by the Applicant and the patent was thus (wrongfully) granted without insertion, then the patentee of the to be referenced patent could invoke this ground for revocation of the patent. This is just one possible situation which I could think of. Any new situation and or cases in which the petitioner has/could invoke such ground for revocation of patent are welcome from readers.
2. Section 25(1)(b) provides for lack of novelty of the invention in light of any document published (before the priority date of the claim) in India or elsewhere as a ground of opposition. It basically covers section 13(1)(a) and 13(2) of the Act on the grounds of novelty as ground of opposition. The corresponding provision for revocation is section 64(1)(e) of the Act which makes a direct reference to the documents referred under section 13 and thus covers this as a ground of revocation (with other grounds as discussed later). The grounds for opposition and revocation on this aspect therefore are almost identical without any inferential variation.
3. Section 25(1)(c) provides for lack of novelty as ground of opposition wherein the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant's claim but having priority date earlier than that of the applicant's claim. Thus it makes a reference to the documents covered under section 13(1)(b) of the Act. It must be noted that such earlier priority claims being published after the Applicant’s claim are considered only for the purpose of novelty and never for the obviousness [unlike documents referred under section 13(1)(a) and 13(2), as discussed later, and therefore these are classified as separate categories]. For the corresponding provision for revocation, although this would automatically be covered under the already discussed section 64(1)(e) of the Act which encompasses all documents referred in section 13 of the Act, the more relevant counterpart would be section 64(1)(a), which provides, as a ground of revocation, the case where invention as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India. Very interestingly, this takes into account only those valid claims of earlier priority date which have been part of a granted patent in India and in case where the earlier priority (but later published) claim (as part of a patent application) has not yet been granted as a patent in India, the applicant of such patent application would not be able to invoke it as ground of revocation for the granted patent unless its own claim (patent application) is granted as a patent in India. In a hypothetical situation, it is also possible that the claim of earlier priority is published even after grant of the later priority claim in India (maximum time for publication is 18 months and theoretically minimum time for grant of patent is about 7-8 months) and thus the applicant having earlier priority would certainly like to file a revocation. Although the applicant of earlier priority claim can always take recourse to section 64(1)(e) to place reliance on its later published un-granted claim, I am unable to find the logic behind introducing such critical change in section 64(1)(a) as compared to the ground for opposition. Any views or suggestions by readers are welcome.
4. Section 25(1)(d) covers what was publicly known or publicly used in India before the priority date of the claim and is equally covered as a ground of revocation under section 64(1)(e) of the Act. However the distinction lies in the explanation to Section 25(1)(d), which provides that an invention relating to a process shall be deemed to have been publicly known or publicly used in India if a product made by that process had already been imported into India before that date (except where such importation is for the purpose of reasonable trial or experiment only). This explanation starts as “For the purposes of this clause...” and is therefore applicable to the respective ground of opposition only. In the similar ground for revocation, however, there is no such explanation and as per the principles of interpretation of statutes, such omission amounts to deliberate exclusion of the effect of such proviso/explanation from the place of omission. It is therefore can be said that for raising a ground of opposition, the importation of product could be counted as use of the corresponding inventive process, whereas for revocation it is not. Again there is lack of logical explanation towards enabling this change.
5. Section 25(1)(e) is directed towards opposition on the grounds of obviousness and lack of inventive step wherein it takes into account all the documents published before priority date [under section 13(1)(a) and 13(2). Note again that the earlier priority and later published claims under section 13(1)(b) are specifically not included for the purpose of obviousness] as well as what was used in India before the priority date of claim. It must be noted that only ‘what was used in India’ is included and ‘what was publicly known in India’ is omitted here from the aspect of obviousness. One reason behind this omission could be the reason that the obviousness, unlike novelty, is itself a very subjective phenomena and tendering another subjective factor such as ‘what was publicly known’ towards its accountability will tend to multiply the unwarranted subjectivity. This hypothesis however is annulled by the fact that this ground of ‘what was publicly known in India’ is actually specifically included in the corresponding provision for revocation viz. section 64(1)(f). Other than this there is not much difference in these grounds.
6. Section 25(1)(f) engulfs section 3 (what is not an invention within the meaning of the Act) and section 4(invention not patentable) as grounds of opposition. The corresponding provisions for revocation are sections 64(1)(d) covering section 3 and 64(1)(k) covering section 4. The provisions are almost identical and so are the grounds available for opposition and revocation on these aspects.
7. Section 25(1)(g) provides a ground of opposition that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed viz. the requirement under section 10(4)(a) of the Act. This ground of opposition although seems to be very vague and ambiguous (in light of the fact that there are no specific guidelines with regard to the disclosure in patent specification), but they are not only essential they are justifiably very well-founded as ground of opposition available to any person, as they touches the hinges of patent system itself. The corresponding provision for revocation is section 64(1)(h) which in addition to section 10(4)(a) also includes section 10(4)(b) viz. lack of disclosure of the best method of performing the invention. Even the requirements of sufficient and fair disclosure are very explicitly described. It is quite unjustified from the Patentee’s perspective to include an additional ground (of best mode) to challenge the patent once the patent has already been granted and the patentee has already, believing the validity of its patent, incurred costs in development and production. It must be noted here that these grounds (specifically of opposition) are exclusive and if a ground is not specifically mentioned therein, it means it is simply not available.
8. Section 25(1)(h) refers to the requirement under section 8 of the Act and rule 12 of the Rules. Non-furnishing of the information or furnishing of wrong information are the grounds of opposition. Under section 8, the applicant is required to furnish the details of filing and prosecution of corresponding patent application(s) in other jurisdictions within 6 months of filing of the application in India; and an undertaking to the keep the Controller informed, regularly, of any such applications till the grant of patent in India. Similar ground is available for revocation of patent under section 64(1)(m).
9. Section 25(1)(i) provides a peculiar ground of opposition. The ground of objection being that that the convention application is not filed in India within twelve months from the date of the basic application in convention country from which the priority is claimed. The first question which came to my mind is why the ground of opposition is confined to only this particular deadline viz. why only convention application deadline being a ground and why not that the PCT national phase application in India was not entered within 31 month from priority application and also why not that the complete specification was not filed within 12 months from the date of provisional application. While searching for the reason behind this, I could realize that for the 31 months deadline in PCT National Phase applications, there is a specific provision (Rule 22 of The Patents Rules 2003) for non-compliance (which renders it ‘deemed to be withdrawn’ in case of non-compliance); and in case of 12 months deadline to file complete specification after provisional specification, there is also a specific provision (section 9 of the Act) for non-compliance (which renders the application as deemed to be abandoned if the deadline is not met). In case of the convention applications, however, section 135 of the Act provides only that the if the convention application is filed within 12 months from the basic application the date of priority of the claims is the date of basic application. It is, to my knowledge, nowhere mentioned, and perhaps it is not required also, to mention the non-compliance of this 12 months deadline, which will have an obvious effect of ineligibility of the applicant to claim priority. But this could be a reason for inclusion of this as a ground of opposition in case the convention application (claiming priority from the basic application) is actually filed after 12 months period and for which there is no specific provision for non-compliance. Readers are welcome to share their view on this. There is no counterpart provision for revocation of patent.
10. Section 25(1)(j) provides non-disclosure or wrong-disclosure of the source or geographical origin of biological material used for the invention. An almost exactly similar ground for revocation is provided under section 64(1)(p).
11. The last ground of opposition under Section 25(1)(k) is the ground that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere. An almost exactly similar ground for revocation is provided under section 64(1)(q).
Then there are additional grounds for revocation of patent which are not available for opposition. I will cover those grounds in the subsequent post.
