Patent Agent Examination 2025| Paper 2 (II) | Question no 5 a

 In September 2024, Company BioHealth Ltd. (Applicant) filed a patent application in India for a new herbal composition called HerboMedix, which is claimed to treat a wide range of skin infections. The application was published, and a competitor company in the herbal medicines industry SecureHealth Ltd., noticed the following: Company SecureHealth Ltd. noted that BioHealth Ltd. obtained the core formula for HerboMedix by improper means from one of its researchers. According to Company SecureHealth Ltd., the researcher was previously employed at Company SecureHealth Ltd. and was involved in an internal research project titled HerbRestore. The project included a formula almost identical to HerboMedix, and the researcher had access to confidential information and proprietary studies related to the formula. Upon leaving Company SecureHealth Ltd., the researcher joined BioHealth Ltd., and shortly thereafter, BioHealth Ltd. filed a patent application for a product that closely resembled the previously undisclosed HerbRestore formula. Company SecureHealth Ltd. further noted that BioHealth Ltd. has made materially incorrect disclosures in its patent specification. In the patent application for HerboMedix, BioHealth Ltd. states that the formula was developed internally through unique R&D efforts. However, Company SecureHealth Ltd. possesses evidence of published research papers, internal reports, and records showing that the formula was actually derived from the research carried out by Company SecureHealth Ltd.’s team, suggesting that the disclosure of the development process was incorrect and intentionally misleading. Company SecureHealth Ltd. has evidence that parts of the formulation for HerboMedix were disclosed in a publicly available research paper authored by Company SecureHealth Ltd.’s research team. The paper was published six months before the priority date claimed by BioHealth Ltd. in their patent application. The research paper details the extraction techniques and chemical combinations, which BioHealth Ltd. subsequently included in the specification of HerboMedix without substantial modification. In view of the above, answer the following by mentioning the relevant sections and rules made therein along with prescribed forms: 

a. What are the options available under the Patents Act for Company SecureHealth Ltd. to challenge the patent application filed by BioHealth Ltd. for HerboMedix, and which specific grounds would be the most effective in supporting their cause in the above given scenario?

Ans: 

Company SecureHealth Ltd. has multiple options under the Patents Act, 1970 to challenge the patent application filed by BioHealth Ltd. for HerboMedix. Below is a detailed response addressing the options, grounds, and procedural aspects:

---

Options to Challenge the Patent Application

1. Filing a Pre-Grant Opposition (Section 25(1))

• SecureHealth Ltd. can file a pre-grant opposition against BioHealth Ltd.'s patent application.
• Timeline:
  • A pre-grant opposition can be filed anytime after the publication of the patent application but before the grant of the patent.
• Relevant Form: Form 7A.

2. Filing a Post-Grant Opposition (Section 25(2))

• If the patent is granted, SecureHealth Ltd. can file a post-grant opposition with the Opposition Board through the Controller of Patents.
• Timeline:
  • Must be filed within 1 year from the date of publication of the grant of the patent.
• Relevant Form: Form 7.

3. Initiating Revocation Proceedings (Section 64)

• If SecureHealth Ltd. misses the opposition timelines, it can seek revocation of the granted patent by filing a petition with the Intellectual Property Appellate Board (IPAB) or through a counterclaim in an infringement suit.
• Timeline:
  • Revocation can be initiated anytime during the term of the patent.
• Relevant Form: No prescribed form; follows standard legal procedure.

---

Grounds for Challenging the Patent Application

SecureHealth Ltd. can challenge BioHealth Ltd.'s patent application based on the following effective grounds:

1. Lack of Novelty (Section 25(1)(b) and Section 64(1)(e))

• The formula for HerboMedix was disclosed in a publicly available research paper authored by SecureHealth Ltd.’s research team, published six months before the priority date claimed by BioHealth Ltd.
• A previously disclosed invention cannot be patented.

2. Lack of Inventive Step (Section 25(1)(e) and Section 64(1)(f))

• The claimed invention lacks an inventive step since it is derived from publicly available information without substantial modification.

3. Prior Publication (Section 25(1)(b))

• The research paper detailing the extraction techniques and chemical combinations constitutes prior publication, invalidating the novelty of HerboMedix.

4. Misappropriation of Knowledge (Section 25(1)(k) and Section 64(1)(b))

• BioHealth Ltd. allegedly acquired the formula through fraudulent means by using confidential proprietary information from SecureHealth Ltd.’s HerbRestore project.

5. False Representation (Section 25(1)(j) and Section 64(1)(h))

• BioHealth Ltd. made incorrect statements in its specification, claiming that the formula was developed internally, which is materially false and misleading.

6. Non-Patentable Subject Matter (Section 25(1)(f))

• If the claimed invention is a mere discovery of a known substance or a simple aggregation of known properties, it would not qualify as patentable under Section 3(d) or Section 3(e).

---

Procedural Steps

For Pre-Grant Opposition:

1. File Form 7A with the Controller of Patents.
2. Submit supporting evidence and statements of opposition (along with affidavits, if necessary).
3. Attend hearings (if required).

For Post-Grant Opposition:

1. File Form 7 with the Controller of Patents within the stipulated time.
2. The Opposition Board will conduct a detailed examination and submit its findings to the Controller.
3. Attend hearings as scheduled.

For Revocation Proceedings:

1. File a revocation petition before the IPAB or as a counterclaim in an infringement suit.
2. Submit evidence and arguments in accordance with standard legal procedures.

---

Conclusion

Based on the facts provided, the most effective grounds would be:

1. Lack of novelty due to prior disclosure in the research paper.
2. Misappropriation of knowledge obtained through fraudulent means.
3. Material false representation in the patent application.

The pre-grant opposition is the most immediate and cost-effective option to prevent the grant of BioHealth Ltd.’s patent. If the patent is granted, SecureHealth Ltd. can proceed with a post-grant opposition or revocation.