Indian Patent Office draws distinct line between examination and opposition proceedings in popcorn box patent dispute

In January 2024 the Indian Patent Office (IPO) rejected a pre-grant opposition filed by Agro Tech Foods and granted a patent in favour of Francois Berthault for a popcorn box invention. It was a heavily contested matter; Agro Tech relied on several grounds, including prior publication, prior use, obviousness and insufficiency under Section 25(1) of the Patents Act to challenge the patentability of Francois Berthault’s invention.

Case background

The invention pertains to a unique box for packaging popcorn, in that it has a hooking system to close it. This comprises a tab connected to the free edge of a flap and a cut made in another flap, into which the tab can be inserted.

Agro Tech relied on 11 citations to challenge the novelty and inventiveness of Berthault’s invention, alleging that a combined reading of these documents would teach a person skilled in the art how to make the claimed packaging device.

Both parties put forward detailed arguments in the pre-grant hearing, and the IPO subsequently appointed another hearing under Section 14 of the Patents Act, which both Berthault’s and Agro Tech’s attorneys attended. Berthault vehemently contested Agro Tech’s presence during this hearing, arguing that the Section 14 provision only authorised the applicant to be a part of the proceedings, and that the opponent had no right to participate in the examination process. Section 14 stipulates:

Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.

The opponents disagreed and relied upon a single-bench judgment by the Delhi High Court in Natco Pharma v Assistant Controller of Patents & Designs (WP(C)-IPD 2/2023 & CM 2/2023, CM 3/2023), in which it was held that:

Where an opposition is filed to an application seeking grant of a patent, the proceedings become adversarial. Due compliance with the principles of natural justice, in the case of adversarial proceedings, necessarily requires both parties to be involved in the proceedings at every stage.

Based on this decision, the opponent contended that it could not be debarred from attending the prosecution hearing.

Berthault pointed out that this decision was appealed before a Delhi High Court division bench and that the court had stayed the single-bench judgment until the next date of hearing. Since the matter was sub-judice, only the applicant would be authorised to attend the hearing under Section 14.

The IPO allowed Agro Tech to be a part of the proceedings – though it was barred from making oral or written submissions – and directed the applicant to file its written submissions within 15 days. Agro Tech also filed a written submission, defying the IPO’s directives.

In the period between the IPO conducting the hearing and issuing its decision, the division bench decided the Natco matter. It held that a patent application’s examination and pre-grant opposition are two distinct and independent processes, and that the opponent has no right to intervene in the examination procedure.

The decision

In light of the division bench’s judgment in Natco, the IPO rejected the written submission that Agro Tech filed during the prosecution hearing. It emphasised that according to the court’s ruling, the opponent has no locus standi under Section 14; the opponent’s right to a hearing pertains specifically to the representation stage and does not entitle it to intervene in the broader examination process. The office stated:

Even from a natural justice principles perspective, a pre-grant opposition is neither adversarial nor contentious. The opponent cannot have the right to a hearing during the examination process because the Patents Act does not outline such a right.

Further, the IPO rejected all grounds for opposition and concluded that a person skilled in the art who wants to automate a box closing cannot use the cited documents because none of these dealt with the specific issue of the automatic closing of a box. None of the cited documents described the combination of pushing the flaps towards the inside of the box and the shape of the cut to automatically close it.

Key takeaways

The successful appeal in Natco brought much-needed clarification on the pre-grant opposition process, and the IPO’s decision in this case highlights that a clear distinction between the examination and opposition processes facilitates a more streamlined and efficient handling of pre-grant oppositions. This is yet another example of how India’s IP regime is evolving at par with peer jurisdictions.