Wednesday, February 11, 2009

Valganciclovir PreGrant Opposition: A Case of Frivolous Objection II

Continuing from our earlier post where we discussed how the NGOs frivolously objected Valganciclovir patent application under section 25 (1) (f) based on their irrational presumption that any compound not published but invented before 1995 is a pre-1995 public disclosure, we now focus on another ground of objection raised by the NGOs under section 25(1)(h). Section 25(1) (h) allows an opponent to challenge the issuance of patent if the applicant –

(1) failed to disclose to the Controller of Patents the information required under section 8, or

(2) furnished the information which in any material was false to his knowledge.

Here again, the NGOs rather than providing evidences to show that Roche failed to disclose the information under section 8 or furnished any false information, argued that Roche delayed in providing information under section 8 (which is, in fact, not a valid ground under section 25(1)(h)). Roche while replying to pre-grant opposition argued that section 25(1)(h) does not give right to the opponent to challenge whether the information required by section 8 has been disclosed within the prescribed time period, especially in the light of the fact that the Patent Applicant has already sought, and obtained, leave of the Controller for the condonation of delay under rule 137 on 23rd May 2006, which was well before the filing of the Opponent’s Written Statement. Roche also argued that from the filing of the instant application in 1995 and up to the last date of deciding the application, the procedure for filing information and taking extension for filing the said information with a petition to the Controller were changed number of times during the period 1995 to 2007 (around 12 years).

The Chennai Patent Office agreed with Roche’s argument that the ground of opposition under section 25(1)(h) is only limited to (1) the applicant failed to disclose to the Controller the information required by section 8, and (2) has furnished the information which in any material particular was false to his knowledge. The Chennai Patent Office further added that the delay in filing the information to the Patent Office is purely procedural aspect during prosecution of the application and not at all ground for opposition under section 25(1)(h). Also adding that the Controller has the power to extent the time and condone the irregularity in the procedure, if the applicant prays for such an action with a relevant petition and fees. Hence, the opposition under section 25(1)(h) is not maintainable.

Now after reviewing the Valganciclovir pre-grant opposition, we do not find any reasonable ground on which the Assistant Controller would have earlier considered giving a hearing opportunity to the NGOs on such frivolous grounds. Obviously Assistant Controller has sufficient knowledge skills to evaluate such frivolous grounds and to decide whether there is a further need for hearing opportunity or not. If such was the arguments made in the pre-grant opposition then the Assistant Controller was reasonably correct in denying opportunity for hearing to the NGOs and creating unnecessary delay in the issuance of patent. It seems to be this pre-grant opposition was just an attempt to delay the Chennai Patent Office proceedings and/or to mislead the Patent Office with irrational arguments. However, what is quite annoying that when the NGOs failed to convince the Chennai Patent Office they approached the Chennai High Court to assure that the Chennai Patent Office waste its precious time discussing their frivolous arguments. We feel extremely sorry for the Assistant Controller who despite made correct observations got bitter pill from the Chennai High Court.

6 comments:

  1. Anonymous10:00 AM

    Dear VC
    I am not ok with your argument regarding section 25(1)(h) is not valid ground because section 8 information is very crucial and important but now a days duriing prosecution applicant and controller take it lightly and allow to file information with late fees. Infact it is delayed by applicant attorney himself due to its laziness.
    In present scenario controller allow section 8 information filing with late fees than there is no need of this ground in pre grant and post grant opposition.
    Do u have any idea why our legislator put this section as one of the post and pre grant opposition

    Bye
    Anon-1

    ReplyDelete
  2. Varun Chhonkar2:19 PM

    Dear Anon-1,

    We never argued that section 25(1)(h) is not a valid ground, we specifically argued that raising objection that the Applicant failed to submit information required by section 8 within the prescribed time limit is not within the scope of section 25(1)(h). The intention of legislature to include such provision in pre and post-grant objection is to allow Opponent to challenge the patent/pending application if there is a likelihood that the Applicant has suppressed or forged any information which may affect the issuance of patent in India. However, late submission of information is completely procedural aspect and the Controller has authority to take on record on filing petition along with prescribed fees. We have been doing patent prosecution for quite a sometime now and came across such cases few times.

    Kind Regards,
    ---
    VC | Patent Circle

    ReplyDelete
  3. Gargee11:04 AM

    Anon-1

    I agree with Varun comments, provision 25(1)(h) is intended when there is a likelihood of wrong information provided under section 8 which may substantially question the issuance of patent by the IPO.

    ReplyDelete
  4. Anonymous10:33 PM

    Dear VC
    The argument given by you as IP practioner who also involved in same type of situation . Here my motive is different if you look this angle the entire view is different. Suppose if youare applicant and file your invention in India along with other countries and meanwhile your invention get patent in India but not in other countries i.e. USA. In that situation what woul be course of action do you file form 8 requierment upto the grant of patent.

    TC
    Anon-1

    ReplyDelete
  5. Dear varun,
    Thanks a lot for your best wishes.

    ReplyDelete
  6. Hi Varun,

    You are correct in your post. I feel unnecessarily issue is made around section 8.

    ReplyDelete