Oppositions to the grant of patents provide an effective means for ensuring the quality and validity of granted patents. They also bring about early rectification of invalid patents. A patent that has been granted or held to be valid after undergoing opposition proceedings would have higher credibility in terms of meeting the patentability requirements.

Though the Indian Patents Act, 1970, had robust provisions for pre-grant opposition, there was no provision for post-grant opposition; the only remedy available to an aggrieved party after the grant of a patent was revocation. The Patents (Amendment) Act, 2005 introduced a system for both pre-grant as well as post-grant opposition. The major difference between the pre-grant and post-grant opposition systems is that while “any person” may file a pre-grant opposition, only a “person interested” may file a post-grant opposition. Also, the procedure for post-grant opposition includes the establishment of an Opposition Board.

The Opposition Board

The Opposition Board is a statutory body constituted under section 25(3)(b) of the Indian Patents Act, 1970, as amended, (the “Act”), and comprises technical experts in the relevant field of technology. In post-grant oppositions, the constitution of an Opposition Board is mandatory and the Controller is not authorized to decide the opposition without taking into consideration the report of the Opposition Board. The main function of the Opposition Board is to thoroughly scrutinize and examine the pleadings (arguments and evidences) submitted by both the parties in post-grant opposition proceedings and to submit its recommendations/report to the Controller. Every Opposition Board so constituted conducts examination in accordance with the procedure as may be prescribed.

Rule 56 of the Indian Patent Rules, 2003, as amended, (the “Rules”) also deals with the constitution of an Opposition Board and the procedure that needs to be followed in post-grant opposition proceedings. On receipt of the notice of opposition, the Controller shall constitute an Opposition Board consisting of three members and nominate one of the members as the Chairman of the Board. The examiner who dealt with the patent application during the procedure for grant is not eligible to be a member of the Opposition Board. The Opposition Board conducts an examination of the notice of opposition and the other documents filed under rule 57 to 60 (written statement, reply statement and evidences). The Board then submits its joint recommendations/report to the Controller, with reasons on each of the grounds taken in the notice of opposition, within three months from the date on which the documents were forwarded to the Board.

The procedure to be followed by the Controller during hearing is provided in rule 62 of the Rules, read with section 25(4) of the Act. On receipt of the recommendations/report of the Opposition Board and after giving both the parties an opportunity of being heard, the Controller shall, after considering the recommendations of the Opposition Board decide the opposition giving reasons. The Controller may require the members of the Opposition Board to be present in the hearing.

Significance of the Opposition Board

The provisions of the Act and the Rules clearly indicate that the Opposition Board has to make its recommendations/report after considering the written statement of opposition, reply statement and evidence adduced by the parties. The recommendations must include reasons on each of the grounds raised by the parties. The recommendations/report is then submitted to the Controller. Even though the Controller is not strictly bound to follow any of the recommendations, he cannot disregard it altogether before passing the order.

The Opposition Board, in its report, may recommend that the patent ought to be revoked on certain grounds like lack of novelty, lack of inventive steps etc., or it may recommend that the patent is valid, or that it needs amendments. Since these recommendations are made by technical experts after thoroughly examining the statements and evidences submitted by the parties, they carry considerable weight.

The importance of the recommendations of the Opposition Board has been duly emphasized by the Supreme Court in a post-grant patent opposition case (Cipla Ltd. vs. Union of India & Ors., [SC, Civil Appeal No(s).8479-8480 of 2012]). In this case, the Supreme Court held that the recommendations of the Opposition Board must be made available to the parties so that they can effectively advance their respective contentions before the Controller at the time of the hearing. The Court held that though the Act and the Rules cast no obligation on the Opposition Board or the Controller to give a copy of the report to either of the parties, since the report is crucial in the decision making process, principles of natural justice must be read into those provisions. Therefore, a copy of the report/recommendation of the Opposition Board should be made available to the parties before the Controller passes the order.

One of the main advantages of an Opposition Board is that the recommendations/report of the Board is made by examiners and other officers who have technical expertise in that particular field. This is extremely significant considering that the Controller may not always be familiar with the concerned technology. Such in-depth expert advice assists the Controller in determining the validity of the patent and facilitates the decision making process.

The concept of expert advice is well known in the judiciary. Courts often appoint expert committees for adjudicating certain matters for exactly the same reason. Similar to the report of the Opposition Board, the report of the Expert Committee appointed by the Court, is only recommendatory; the judge is not bound to follow its recommendations. The only difference is that the Opposition Board has to be mandatorily constituted by the Controller in each and every post-grant opposition case, whereas the appointment of an Expert Committee by the Court is at the discretion of the judge. This clause, for mandatory constitution of the Opposition Board, was probably inserted by the legislature as a precautionary measure. Considering the highly technical nature of patents, the availability of expert advice is absolutely necessary in all cases and cannot be left to the discretion of the Controller.

Conclusion

The report/recommendations of the Opposition Board are only recommendatory. However, as the report is a well-deliberated expert opinion, it has substantial persuasive value and may greatly influence the decision of the Controller. Even though the Controller is not bound to follow the recommendations, he is bound by law to effectively consider the recommendations of the Opposition Board before passing an order. He will have to give convincing reasons for either agreeing or disagreeing with the recommendations of the Opposition Board. If it is shown that the Controller disregarded the report without any valid reason, the order passed would be vitiated for violation of the principles of natural justice and may be set aside on appeal. The provision for mandatorily constituting an Opposition Board during post-grant opposition, for giving expert advice, is based on sound judicial principles.

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