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

 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: 

 Once the above challenge from Company SecureHealth Ltd. is received, what would be the procedural sequence for dealing with the matter, under the Patents Act and Rules made therein?

Ans: 

The procedural sequence for dealing with the challenge raised by Company SecureHealth Ltd. against the patent application filed by BioHealth Ltd. for HerboMedix would depend on whether the challenge is made as a pre-grant opposition or post-grant opposition. Below is the detailed procedural sequence under the Indian Patents Act, 1970, and Patents Rules, 2003:

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

Step 1: Filing the Pre-Grant Opposition

• Form to be filed: Form 7A.
• Timeline: The pre-grant opposition can be filed anytime after the publication of the patent application (under Section 11A) and before the grant of the patent.
• Grounds: The grounds for opposition must be supported by evidence, as outlined in Section 25(1) and Rule 55(1).

Step 2: Communicating the Opposition to the Applicant

• Upon receiving the opposition, the Controller sends a copy of the opposition notice and supporting documents to the patent applicant (BioHealth Ltd.) for their response.

Step 3: Applicant's Response

• The applicant has the opportunity to submit their statement and evidence in response to the opposition (Rule 55(4)).
• Timeline: The response must typically be submitted within 3 months from the date of receiving the opposition.

Step 4: Hearing

• After receiving the response, the Controller may, at their discretion, call both parties for a hearing (Rule 55(6)).
• The Controller must notify both parties of the hearing date.

Step 5: Decision

• The Controller examines the opposition, the applicant's response, and any evidence submitted by both parties.
• The Controller decides whether to grant, modify, or reject the patent application based on the findings.
• If the opposition is upheld, the application may be refused or amended.

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

Step 1: Filing the Post-Grant Opposition

• Form to be filed: Form 7.
• Timeline: The post-grant opposition must be filed within 1 year from the date of publication of the patent grant.
• The opposition is filed before the Opposition Board through the Controller.

Step 2: Constitution of the Opposition Board

• The Controller constitutes an Opposition Board under Rule 56.
• The Board includes three examiners who review the case and submit their recommendations to the Controller.

Step 3: Notice to the Patentee

• The Controller serves a copy of the opposition notice and supporting documents to the patentee (BioHealth Ltd.).
• Timeline: The patentee must file their written statement and evidence in response within 2 months of receiving the notice (Rule 57(1)).

Step 4: Rejoinder by Opponent

• The opponent (SecureHealth Ltd.) has the option to file a rejoinder to the patentee's response within 1 month of receiving it (Rule 58).

Step 5: Hearing

• A hearing is conducted if requested by either party or if the Controller deems it necessary.
• Both parties present their arguments and evidence.

Step 6: Decision by the Controller

• The Controller considers the recommendations of the Opposition Board, the submissions of both parties, and the evidence before deciding whether to revoke, amend, or uphold the patent.

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3. Revocation Proceedings (Section 64)

If the patent is granted and the opposition period has expired, SecureHealth Ltd. may initiate revocation proceedings in the following ways:

• Petition to the High Court or IPAB for revocation under Section 64.
• Counterclaim in an infringement suit if BioHealth Ltd. sues SecureHealth Ltd. for infringement.

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Key Procedural Rules and Sections

1. Pre-Grant Opposition: Section 25(1) and Rule 55.
2. Post-Grant Opposition: Section 25(2) and Rules 56–62.
3. Hearing Procedures: Rule 129.
4. Revocation: Section 64.
5. Relevant Forms: Form 7A (pre-grant) and Form 7 (post-grant).

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Summary of the Procedural Sequence

1. Pre-Grant Opposition:
   • File Form 7A → Communicate to the Applicant → Applicant’s Response → Hearing (if required) → Controller’s Decision.
2. Post-Grant Opposition:
   • File Form 7 → Opposition Board Review → Notice to Patentee → Patentee’s Response → Rejoinder by Opponent → Hearing → Controller’s Decision.
3. Revocation Proceedings:
   • File a petition or counterclaim → Present evidence and arguments → Decision by the Court or IPAB.

SecureHealth Ltd. should choose the procedural route that aligns with the stage of the patent application and the available evidence to maximize its chances of success.