Opposition of patent – Patent registration in Coimbatore

Opposition at a pre-grant stage to the Patent Application

Section 25 of the Patents Act, 1970 mentions the opposition at a pre-grant stage to the patent application of the patentee. Therefore, advisedly right to object at a pre-grant stage has been given to ‘any person’ by the said amendment. This is an illustration of statutorily broadening the concept of locus standi and widening the scope of objection procedure by giving access to ‘any person’, who has a concern for public interest in the area of public health and nutrition, to raise an objection. The grant of patent is virtually a grant of monopoly right against the whole world and that is why such wide ranging right of objection has been designedly given at a pre-grant stage.

The petitioners in this writ petition are asserting their rights and voicing their concern on a broad public interest angle. So, it cannot be said if their right is denied they will not suffer any prejudice by denial of an opportunity of hearing to them to establish their rights. A right is a legally protected interest. Therefore when law consciously confers right on a person to object at a pre-grant stage that patent right must be protected in the way it has been granted, namely the right to object with a right of hearing. For a Court to dilute the said right on the basis of an interpretative process and by looking at it from a rather narrow angle, would, in our judgment, be a travesty of justice.

The argument advanced on behalf of the fourth respondent that the expression ‘the Collector shall hear’ in Section25(1)(k) of the said Act should mean ‘the Collector may hear’ is not sound in law. Here we may refer to the provision for hearing which existed prior to the said amendment. Under the pre-amended Section 25(2) the provision relating to hearing is couched in the following words: “Section 25(2): Where any such notice of opposition is duly given, the Controller shall notify the applicant and may, if so desired, give to the applicant and the opponent an opportunity to be heard before deciding the case.

Therefore, it is clear that the expression ‘may’ give the opponent an opportunity to be heard has been replaced by the word ‘shall hear’. Where legislature itself makes such alteration, making its intention clear in specific term, no option is left except to follow the strict letter of law.

As explained above, the concept of prejudice in a disciplinary enquiry is different from the concept of prejudice in the present case. Grant of patent virtually confers the right of monopoly, which is a right in rem granted in favor of the fourth respondent. Before such a right is granted, law has provided that right of objection to any person. As the patent right is a right in rem, law by the 2005 Amendment confers right of objection also on very wide terms on any person. Law further mandates when objection is raised, the objector must be allowed to place his objection in a proceeding in which he should be personally heard. That is the language of Rule 55(5) and 55(6) of the Rules, which are quoted herein before.

There is another age old principle which enjoins when statutes provides for doing something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable.

The remedy at the post-grant stage of patent cannot be equated with the remedy at the pre-grant stage. The insufficiency of the opportunity of hearing at the pre-grant stage cannot be made good by grant of opportunity at the post-grant stage. Since, statute has given remedy at both the stages; it must be made available at both the stages. One cannot be a substitute for the other. An unfair trial cannot be cured by a fair appeal. See Institute of Chartered Accountants of India versus L.K. Ratna’s case.

In view of those principles the third respondent is required to act with a greater application in view of the specific stipulations for consideration contained in Rule 55(6), read along with Section 25(1)(k) of the Act. So by denying a personal hearing to the petitioner before deciding the petitioner’s objection, the third respondent acted wholly without jurisdiction in its order of grant of patent in favor of the fourth respondent. The grant of patent is thus as non-established in law and consequently is liable to be set aside.

Opposition of grant of patent for invention “Rodent Repellent Composition”

The alleged invention, according to the learned Counsel for appellant involves adding a known rodent repellent to a mixture of LDPE and EVA, allegedly resulting in a rodent repellent composition for use in laminates for godowns and food storages, as well as for water/moisture proofing for godowns, food storages and other packages. Admittedly, the rodent repellent to be added to the LDPE, EVA mixture is a publicly known and used rodent repellent and it is merely a process for producing a mere admixture of an existing rodent repellent with an LDPE, EVA mixture, allegedly resulting in the aggregation of the properties of the components thereof.

The Counsel for the appellant submitted that simply because there is a particular sequence of mixing involved does not mean that the process is per se not mere admixture resulting only in the aggregation of the properties of the components thereof. The specific contention of the Opponent of the patent that the result of the process sought to be patented by Respondent No. 1 is at best the mere aggregation of the properties of the components thereof, obtained by a mere admixture of the said components using mixing techniques and processing parameters that are well known, has not been dealt with by the Assistant Controller. As such, the finding of the Assistant Controller in this regard is without proper application of mind and the specific contentions of the Opponent having not been addressed. In view of the foregoing, the conclusion arrived at by the Controller on this issue is wholly untenable.

The learned Counsel for the respondent submitted that the respondent’s invention resides in a combination of steps as explained above. Therefore, it cannot be said that the applicant’s invention resides only in blending or mixing or shredding such mixture. Further it is clear from claim 1 that process steps involve chemical reaction and the Rodent repellent composition produced by such process is a chemical compound and not a mere admixture. In view of the above, the appeal petition shall be dismissed with costs to the respondent.

We agree with the contention of the respondent that invention is not a mere admixture. We therefore uphold the decision of the Controller where he stated that “while preparing rodent repellent composition the applicant has not merely admixed the ingredient of the composition such as LDPE, EVA and rodent repellent together. Rather they are mixed in a proper and definite proportion, amounts at particular temperature and in a particular sequence. Even the affidavit of Vijay Kumar Gupta. .does not reveal about these steps and proportions and amount of these ingredients. Therefore the alleged process cannot be considered as mere admixture. In view of this, this ground of opposition of patent also fails.”

Patent in respect of ‘Phase Change Material’

It is clear from the aforesaid discussion that the invention of the present patent is not patentable under section 2 (1) (j) of the Patent Act, 1970 because it lacks novelty and inventive step in view of the wide spectrum of the prior knowledge and prior use as established by the documents submitted by the first opponent. Further it is observed that the PCM composition and its process are well known in the art with same constituents and amounts. Therefore the invention as claimed in present patent is recommended to be not patentable under section 3(d) as the claimed process is mere mixing of known constituents and does not result in any new product, since the composition so formed comprises the various constituents in same amounts as disclosed in prior art.

It is observed from the description of the present patent application that basically discloses the PCM composition and its application for stabilizing the temperature in telecom shelter, electronic enclosures etc. rather than the claimed process for the preparation of PCM composition and its application. The description also lacks adequate examples relating to broad claim of percentage of each ingredients of PCM composition. The description was also required to establish synergy of the claimed compositions of present invention. In absence of all such data and examples, the description lack sufficiency and a person of ordinary skill in the art would not be able to carry out the invention to the level of distinguishable results of the present invention against the results of prior art.

It is pertinent to note that there is inconsistency with respect to percentages of the three constituents i.e. if the composition of borax is “15%”, it would leave no place for strontium or its compound since claim 1 states that the calcium salt must be “at least” 85% by weight. However, claim 1 also avows that the phase change material composition must comprise of “at least” 0.1% by ‘weight of a strontium salt. Thus, there is inherent inconsistency in the invention as disclosed.

Furthermore, it can be readily inferred from claim I that the calcium salt and strontium “have” to be present in the process as disclosed. However, no such inference can be drawn with respect to borax. In fact, it has been disclosed that borax can be altogether discarded from the composition, as it has been stated that borax is to be “0%-15 %” by weight of the composition.

In view of the arguments and evidences provided by the second opponent in notice of opposition and further in reply evidence under rule 59 of Patent rules, 2003, it is clear that the present patent would have been obvious to any person skilled in the art. The Patentee has merely applied an old process in an old way to an analogous subject, which cannot be the subject of protection under patent law. The description of the present patent application basically describes the PCM composition and its application for stabilizing the temperature in telecom shelter, electronic enclosures etc. rather than the claimed process for the preparation of PCM composition and its application. The description also lacks adequate examples relating to broad claim of percentage of each ingredients of PCM composition. The descriptions were also required to establish synergy of the claimed compositions of present invention which is comes under the intellectual property rights. In absence of all such data and examples, the description lack sufficiency and a person of ordinary skill in the art would not be able to carry out the invention to the level of distinguishable results of the present invention against the results of prior art.

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