I have been meaning to write on this issue for quite some time because there appears to be this misconception that non-response to a pre-grant opposition is not adverse to a patent application. In this post, I intend to address this issue layer by layer.
The procedure to be followed in a pre-grant opposition is prescribed in Rule 55 of the Patents Rules, 2003. The Act and the Rules refer to the pre-grant opposition as a “representation”, which the Delhi High Court in UCB Farchim v. Cipla (Refer to Para 13 of the judgment) interpreted as an “aid” to the process of examination of a patent application.
Upon receipt of a pre-grant opposition, the Controller is not expected to mechanically inform the patent applicant of the opposition. In fact, Rule 55(3) clearly requires the Controller to consider the representation, and apply his mind. Only if the Controller is of the belief that the representation could lead to either refusal or amendment of the patent application, he shall give notice of the representation to the patent applicant and send him a copy of the representation.
This firstly means that a pre-grant representation may be rejected in limine if the Controller does not believe that the representation affects the patent application. The second consequence is that since the pre-grant mechanism has been interpreted by the Delhi High Court as being an aid to the examination process, the issuance of notice of the pre-grant opposition must be treated as being similar to the issuance of an examination report, if not the same.
The reason the two are similar but not the same is because in a standard examination report issued by the Controller under Rule 24B, the patent applicant has 12 months from the date of receipt of the FER to put his application in order for grant. However, under Rule 55(4), the patent applicant gets a maximum non-extendable period of 3 months from the “date of notice” to respond to the pre-grant opposition. (Rule 55(4) does not refer to “date of receipt of the notice”, however the general rule of notices could require this to be read as “date of receipt of the notice”)
The period of 3 months under Rule 55(4) is non-extendable because Rule 138, which vests the Controller with the power to extend time, clearly excludes Rule 55(4) from its purview. Therefore, in the event the patent applicant fails to file his response to the pre-grant opposition within 3 months from the “date of notice”, he cannot be permitted to respond to the objections raised in the pre-grant representation beyond that period, nor does the Controller have the right to extend the time.
Now that the issue of time extension has been irrefutably addressed, what needs to be addressed next is the true consequence of not responding to a pre-grant opposition. While Rule 58, which deals with a post-grant opposition, clearly states that if the patentee does not respond to the post-grant opposition in time, his patent shall be deemed to have been revoked, Rule 55 is silent on the issue of non-response to a pre-grant opposition by the patent applicant.
Does this mean there is no adverse effect because Rule 55 is silent? Or is Rule 55 silent because the issue is addressed by another provision? This is where one needs to refer to Section 21(1) of the Patents Act, which reads as follows:
21. Time for putting application in order for grant: (1) An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller
Section 21(1) requires the patent applicant to comply with all requirements imposed on him by or under the Act within the prescribed period, failing which the application shall be deemed to have been abandoned. This mandatory requirement applies to filing of a response to a pre-grant opposition as well.
It is to be noted that Section 21(1) does not restrict itself to responding to the FER issued by the Controller under Rule 24B, but goes on to include “other documents related thereto” which is forwarded to the patent applicant by the Controller. This must include the issuance of notice under Rule 55(3) to the pre-grant opposition as well.
Further, the prescribed period referred to in Section 21(1) in relation to a pre-grant opposition is 3 months. Consequently, if a patent applicant does not file his response to a pre-grant opposition within the non-extendable 3 months from the date of notice, he shall be deemed to have abandoned his application.
What is also critical is that the effect of Section 21 being automatic, upon failure by the patent applicant to comply with the requirements of the Act within the prescribed period, the Controller has no power to intervene and annul the effect of this deeming provision. Therefore, no reminders/letters can be sent by the Controller to the patent applicant if the applicant fails to file a response to the pre-grant opposition within 3 months from the “date of notice”.
Comments and Corrections are welcome!