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Singapore – Who Can File Post-Grant Oppositions?

The Patent Amendment Act 2005 brought about a significant inclusion to the then existent prosecution scheme by introducing the scheme of post-grant opposition. The legislation provides that a post-grant opposition as under Section 25(2) of the Patents Act 1970 may be filed within one year of the grant of the patent on the same grounds governing pre-grant oppositions as prescribed under Section 25(1).  However, one of the vital differences between the two provisions rests in the locus standi of the person moving to oppose the grant of a patent: a pre-grant opposition being allowable from “any person”, while only any “person interested” being entitled to file post-grant opposition.

The recent decision rendered in the post-grant opposition heard in respect of Roche’s Patent IN207232 on Valcyte, an anti-retroviral drug brought to issues including determination of locus standi of the parties. The patent had been granted in June 2007, without hearing the pre-grant opposition filed against it. The Apex Court directed that the same be heard and the pre-grant opposition subsequently failed. Aggrieved by this rejection, the parties appealed to the Supreme Court, which directed all the parties to present their stand at the impending post-grant proceedings.

The post-grant opposition focused on three primary grounds: the subject matter of the patent falling within the scope of Section 3(d) Patents Act 1970; the lack of inventive step and the locus standi of the parties opposing the grant. Procedural grounds with respect to Conventional application and foreign filling were also raised in the course of the proceedings.

The issue of “person interested” as mandated by section 25(2) was also deliberated upon, since the locus standi of one of the opponents, Delhi Network of Positive People (DNP+) was challenged. The Controller considered Section 25(2) and the provision governing person interested. The rendition in the case of Ajay Industrial Corporation v. Shiro Kanso AIR 1983 Delhi 496 was also considered, which defines the locus standi of a person interested vis-à-vis the filing of a revocation petition, under Section 64 of the Patents Act 1970. The decision states:

“A ‘person interested’ within the meaning of section 64 must be a person who has a direct, present and tangible commercial interest or public interest which is injured or affected by the continuance of the patent on the register’”.

Further, examining the provision under Section2(1)(t) defining a “person interested” the Controller noted the same to be worded as:

 ‘Includes a person engaged in, or in promoting, research in the same filed as that to which the invention relates.’ 

The Controller in view of the definition opined that the transitional word “including” is open term, “including the persons provided therein but not excluding others.”

Following this interpretation, the Controller allowed DNP+ to participate in the opposition proceedings.