Post-grant opposition good for challengers too: Experts

Megha Lodha - Mumbai

While the debate rages on whether India should stick to its present pre grant patent opposition provision or go for the much – in – use post grant opposition as far as the the third amendment to the Indian Patents Act is concerned, experts say a provision for post – grant opposition works better for everyone.

US-based patent attorney, Dr Mark Pohl said post – grant opposition is a better idea than pre-grant for both, the person seeking a patent and the challenger. This is simply because it gives more time to both the parties.

When there is a pre-grant opposition, there are minimal details of the patent available to the challenger and even the respondent has less time to answer. In a post-grant opposition, the entire patent is available so that the grounds on which it is challenged are clear and there are no ambiguities. Also, this would give more time to both, the challenger and the patent holder to decide the points of contention better. When asked whether India should experiment the pre-grant opposition for sometime after the product patent regime sets in, as has been suggested by the IPA, Pohl was of the opinion that once we start experimenting, it is likely to stay that way.

Pohl opined that experimenting with this was not a good idea and it is because of the reasons cited that he says most of the TRIPs-compliant countries provide for post grant opposition.

It had been reported that the Group of Ministers (GoM) on Patent Law may restore the facility of pre-grant opposition to patents which comes after the submission of suggestions by associations like the Indian Drug Manufacturer’s Association (IDMA) and the Indian Pharmaceutical Alliance (IPA). These associations that represent domestic companies had stressed that introducing post-grant opposition in place of pre-grant opposition as it currently stands would not be a welcome move.

Dr Gopakumar G Nair, IPR consultant and advisor, told Express Pharma Pulse that the suggestion of continuing pre-grant opposition is in keeping with the TRIPs spirit and was therefore welcome. However, the question here is, will continuing with pre-grant opposition prove to be beneficial?

Apart from India, Australia and New Zealand are the two other countries that provide for a pre-grant opposition. If India is to benefit from post-grant opposition regime, then we need to have higher IPR generation, better patent infrastructure and improved legal capabilities, suggest experts.

The IPA, in its presentation to the government had stated earlier that if the section on pre-grant opposition is to be deleted, the government should wait for at least three years, before deciding whether it needs to be done away with. IPA’s concern was that if post-grant opposition is brought in, it would lead to high number of litigation cases and clog up the courts; while in the pre-grant, it becomes the responsibility of the patent office to look into the matter.

Similarly, the IDMA had also sent its suggestions to the government, which said that pre-grant opposition would mean unjustified concessions to foreigners. The submitted paper said that the TRIPs agreement favours developed nations at the cost of developing countries like India and mandates changes in intellectual property regulations, which are unsuitable and untimely for developing countries. The IDMA says that as TRIPs does not call for removal of Section 25 (pre-grant opposition). It feels that if by way of post-grant opposition, frivolous patent applications get accepted, it would play havoc through wrongful patent monopolies thus created and will not only hurt consumers through high prices, as well as stifle the domestic industry and R&D activities.

— meghalodha@express2.indexp.co.in