Opposition Scheme Under Different Name Gets Shut Down Again
In a significant decision, the Controller of Patents in India has dismissed a pre-grant opposition filed against patent application no. 1795/CHENP/2014, issued as Patent IN 426748 to Furukawa Electric Co. Ltd. The opposition, filed by an individual named Sonal, was dismissed under Section 25(1) of the Indian Patents Act.
The Controller's decision comes amidst a growing trend in India to scrutinise and dismiss malicious or benami (fraudulent or sham) patent oppositions. This trend is primarily governed by provisions under the Patents Act, 1970, and is influenced by judicial rulings focusing on the merit of opposition and procedural fairness during post-grant opposition.
In this case, the Controller considered the hearing arguments of the Applicant's Agent, Ms. Anitha Elizabeth, and agreed with her argument that the representation of opposition under Section 25(1) should be dismissed because the Opponent's intention was to delay the grant of a patent to the Applicant. The Opponent, Sonal, invoked several grounds from the Indian Patents Act in the pre-grant opposition, but the Controller delved into the merits of the individual grounds and found that the Opponent's non-attendance at the subsequent hearing, filing without substantial pleadings or credentials, and inappropriate use of statutory grounds indicate a mala fide intent.
The Assistant Controller of Patents & Designs suspected Sonal to be a proxy or benami, and the Controller's decision to consider the merits of the individual grounds, despite agreeing to dismiss the opposition on account of its malicious nature, is noteworthy. The Controller relied on the Hon'ble Intellectual Property Appellate Board (IPAB) decision in Order dated August 21, 2020, and the Hon'ble Bombay High Court decision in Writ Petition (L) No. 3718/2020, in making this decision.
It is worth noting that Sonal had filed as many as 50 pre-grant oppositions against several patent applications covering various technology verticals. The mechanically citing of certain alleged prior art documents was mentioned in the decision. The recent judicial pronouncements have sensitized the Indian Controllers concerning the illegitimate nature of benami oppositions.
However, despite the Controller's agreement that the opposition is malicious, it has not led to its outright dismissal. The Controller's decision suggests that while the Indian Controllers are aware of the illegitimate nature of benami oppositions, they are still willing to examine the merits of the case.
The Indian Patent Office (IPO) has granted a Patent to Furukawa Electric Co. Ltd. for their invention titled "Method of Manufacturing an Optical Fiber Preform." This decision contrasts with the IPAB order and High Court decision in Writ Petition, highlighting the complexities and nuances involved in patent opposition proceedings in India.
The dismissal of malicious or benami patent oppositions in India requires a careful examination of the legitimacy and substance of the opposition claims under the Patents Act, 1970, supported by evidentiary proof. Courts and IPAB have been consistent in dismissing baseless oppositions while protecting genuine patent rights.
The Controller's decision to dismiss the pre-grant opposition filed by Sonal against patent application no. 1795/CHENP/2014, issued as Patent IN 426748 to Furukawa Electric Co. Ltd, signals a focus on financial integrity within the business of patent applications in India. Given the Assistant Controller's suspicion of Sonal being a proxy or benami, the Controller's examination of the individual grounds, despite dismissing the opposition due to its malicious nature, demonstrates the significance of designs and creativity in the context of patent law.
