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 23^rd 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.