We are pleased to announce that the Indian Patent Office (IPO) has recently granted a Patent, dismissing a pre-grant opposition filed by ‘Opponent’ Sonal and deciding in favor of the ‘Applicant’, FURUKAWA ELECTRIC CO. LTD., on their invention titled “Method of Manufacturing an Optical Fiber Preform.”
The matter was represented by Ms. Anitha Elizabeth, representing De Penning & De Penning, who prima facie refuted the validity of the said pre-grant opposition. Notably, the Opponent has filed as many as 50 pre-grant oppositions against several patent applications covering various technology verticals; nearly all oppositions were not represented by her at the hearing stage.
The Assistant Controller of Patents & Designs concurred with the Applicant Agent’s submission that the Opponent was suspected to be a proxy or benami, possibly appointed as an imposter for another party choosing not to disclose their identity, which amounts to abuse of the process of Indian law. The Controller also stated in the decision that the mala fide intent of the Opponent is evident from their non-attendance at the subsequent hearing, filing without any substantial pleadings or credentials but mechanically citing certain alleged prior art documents and inappropriate statutory grounds. The Controller relied on the Hon’ble Intellectual Property Appellate Board (IPAB) decision in Order dated August 21, 2020, passed in OA/2/2016/PT/MUM, and the Hon’ble Bombay High Court decision in Writ Petition (L) No. 3718/2020, and agreed with the Applicant’s Agent’s argument that the representation of opposition under Section 25(1) merits being dismissed in limine because the Opponent’s intention is only to delay the grant of a patent to the Applicant.
The Controller took into account all of the hearing arguments of the Applicant’s Agent, and dismissed the pre-grant opposition under Section 25(1) filed against the patent application no. 1795/CHENP/2014 by issuing a Patent (IN 426748) to the Applicant.
Unlike the above-referred IPAB order and High Court decision in Writ Petition, it is interesting to note that despite the Controller having concurred to the fact that the opposition is to be dismissed on account of its malicious nature, the Controller has nevertheless delved into the merits of the individual grounds invoked by the Opponent, namely Section 25(1)(b), 25(1)(e), 25(1)(f), and 25(1)(g) of the Indian Patents Act.
The recent judicial pronouncements calling out the inadmissibility of such benami oppositions have albeit sensitized the Indian Controllers concerning the illegitimate nature of such oppositions, yet, has not led to their outright dismissal.
Author: Anitha Elizebeth, Patent Attorney, De Penning & De Penning