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The Locus of Pre-Grant Patent Opponent in Patent Examination Process

One of the challenges surrounding patent law revolves around the locus of a pre-grant patent opponent in the patent examination process. This article delves into the critical examination of the order dated 14.12.2022, which allowed certain amendments in the Indian Patent Application No. IN4145, and subsequently led to litigation.

The crux of the controversy lies in the alleged violation of the principles of natural justice. The opponent contended that the order permitting amendments to the patent application was issued without granting them a fair hearing. Specifically, all five pre-grant opposition hearings had concluded on 03 November 2022. Despite this, the Controller of Patents directed the applicant to carry out amendments, which were eventually allowed on 14.12.2022.

The Core Legal Question:
The pivotal issue at hand is whether an opponent possesses the right to participate in the patent examination process, especially when amendments are under consideration. Stated differently, does the opponent have a stake in the examination process, mandating their participation when modifications to the patent application are being evaluated?

Judicial Interpretation:
The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.

Furthermore, the court elucidated that while pre-grant opposition undoubtedly aids the Controller in decision-making, it does not ipso facto grant opponents an inherent right to participation or an audience during the Patent examination process. This interpretation upholds the procedural autonomy of the Controller in conducting examinations while balancing the interests of both applicants and opponents.

The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.

The Concluding Note:
In conclusion, the Hon'ble Division Bench's analytical approach reaffirms the statutory framework's intent, emphasizing the distinct stages of the patent examination process and the corresponding rights of pre grant opponents.

The Case Law Discussed:
Case Title: Novartis Ag Vs Natco Pharma Limited and another
Date of Judgement/Order:09.01.2024
Case No. LPA 50/2023
Neutral Citation: 2023:DHC:84:DB
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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