Navigating Pre-Grant Patent Oppositions in India: Understanding the Legal Landscape and Recourse for Opponents

The Indian Patents Act, 1970, provides a mechanism for interested parties to challenge patent applications both before and after the grant. Section 11-A mandates the Controller of Patents to publish every patent application. Following publication, but prior to patent grant, Section 25(1) of the Act allows "any person" to file a pre-grant opposition in writing. This contrasts with post-grant opposition under Section 25(2), which can only be initiated by a "person interested" The grounds for pre-grant opposition are explicitly outlined in clauses (a) to (k) of Section 25(1). 

Upon receiving a pre-grant opposition, the Controller is obligated to consider the submissions of the opponent, provide a hearing if requested, and subsequently inform the applicant if refusal or amendment of the application or specifications is contemplated. The applicant is entitled to respond with their own statement and evidence. After due consideration of both parties' submissions and a hearing, the Controller may reject the opposition, refuse the patent, or direct amendments before granting the patent, issuing a reasoned order within one month as per Rule 55 of the amended Patents Rules, 2003. Notably, Section 15 of the Act also empowers the Controller to independently require amendments or refuse an application before grant. The Controller is expected to concurrently decide on the pre-grant opposition and the patent application. While crucial, the pre-grant opposition procedure is less detailed than that for post-grant opposition. 

A significant point of contention lies in the absence of a direct statutory appeal against an order by the Controller rejecting a pre-grant opposition. However, if the Controller refuses the patent application itself (either due to a successful pre-grant opposition or suo motu under Section 15), the applicant retains the right to appeal to the High Court under Section 117-A. Courts have historically viewed pre-grant opposition as an aid to the Controller's examination process. 

The 2005 amendment to the Patents Act introduced the current framework for post-grant opposition under Section 25(2). Before this amendment, only "persons interested" could oppose a patent before grant, within four months of the advertisement by the Controller of acceptance of the complete specification. Orders passed in such oppositions were appealable to the now-abolished Intellectual Property Appellate Board (IPAB). Prior to 2005, Section 27 (since omitted) also allowed the Controller to refuse an application based on information regarding anticipation or prior publication, independently to a formal opposition. 

Presently, the Act offers "any person" the opportunity for pre-grant opposition and "any person interested" the options of post-grant opposition with the Controller or filing a revocation petition with the High Court. Despite these avenues, an opponent whose pre-grant opposition is rejected lacks a specific statutory right to appeal that rejection. 

However, the Constitution of India grants broad powers to High Courts under Articles 226 (writ jurisdiction) and 227 (supervisory jurisdiction) to review the actions of the State and quasi-judicial authorities. The Controller of Patents, functioning as a State entity under Article 12 and exercising quasi-judicial powers akin to a civil court under Section 77 of the Act, falls under this purview. 

Therefore, a Controller's order rejecting a pre-grant opposition could, in principle, be challenged before a High Court under Articles 226 or 227. While High Courts possess the jurisdiction to intervene in orders from quasi-judicial bodies, they often refrain from exercising this extraordinary jurisdiction when an efficacious alternative statutory remedy is available to the aggrieved party. 

In this context, the Supreme Court's judgment in J. Mitra & Company v. Assistant Controller of Patents & Designs [(2008) 10 SCC 368] is crucial. The Court held that if an opponent, whose pre-grant opposition is rejected and can demonstrate that he is a "person interested", he has two alternative statutory remedies: filing a post-grant opposition under Section 25(2) with the Controller or a revocation petition before the IPAB (now High Court) under Section 64. Furthermore, rejection of a post-grant opposition can be appealed to the High Court under Section 117-A. 

The Delhi High Court, in M/s UCB Farchim SA vs. M/s Cipla Ltd [2010:DHC:716], addressed the maintainability of writ petitions against the rejection of pre-grant oppositions. While acknowledging its power and jurisdiction under Article 226, the High Court held that it would ordinarily decline to entertain such petitions due to the availability of efficacious alternative statutory remedies under Sections 25(2) or 64 for "persons interested". However, the Court clarified that if a pre-grant opponent is not considered a "person interested" for the purposes of post-grant opposition or revocation, the High Court would assess the merits of entertaining a writ petition based on the specific facts and circumstances. The Delhi High Court reiterated these principles in subsequent cases. 

Conversely, the Bombay High Court, in Glochem Industries Ltd. v. Cadila Healthcare Ltd. (2009), took a different stance. Despite the petitioner being a "person interested", the Court entertained a writ petition against the rejection of a pre-grant opposition, citing potential jurisdictional errors in the Controller's order. The Bombay High Court, however, acknowledged that the decision to entertain a writ petition remains a matter of prudence and discretion. 

More recently, the Madras High Court in Adiuvo Diagnostics Pvt. Ltd. Vs. Union of India & Ors. [2025:MHC:835; Date: March 25, 2025] considered this issue. Referencing the Delhi High Court's decision in UCB Farchim, the Madras High Court affirmed that while the existence of an alternative remedy is a relevant consideration, it does not automatically preclude the exercise of the High Court's power under Article 226. The Court emphasized that this power is broad and can be invoked when a statutory authority fails to exercise its vested jurisdiction, exceeds it, or acts perversely. Being a discretionary power, the availability of an alternative remedy is a significant, but not conclusive, factor in deciding whether to exercise writ jurisdiction. The High Court primarily examines the decision-making process under its extraordinary jurisdiction, not the decision itself. 

The Supreme Court's ruling in Whirlpool Corporation vs. Registrar of Trade marks, Mumbai & Ors. [(1998) 8 SCC 1] provides further clarity on the limitations of the alternative remedy rule. The Court established that the existence of an effective and efficacious alternative remedy does not bar the High Court from exercising its writ jurisdiction in at least three circumstances: (a) enforcement of Fundamental Rights, (b) violation of natural justice principles, or (c) orders or proceedings that are wholly without jurisdiction or challenge the vires of an Act. These exceptions have been consistently upheld by the Supreme Court, most recently in Radha Krishna Industries v. State of Himachal Pradesh [2021 SCCOnLine SC 334]. 

In conclusion, an unsuccessful opponent in a pre-grant opposition, even if considered a "person interested" is not necessarily barred from invoking the extraordinary jurisdiction of the High Court under Article 226 solely due to the availability of post-grant opposition or revocation petition. The principle of "availability of alternative remedy" is subject to established exceptions as articulated by the Supreme Court. While the High Court will generally consider the existence of alternative remedies, it will likely entertain a writ petition if grounds such as violation of fundamental rights, breach of natural justice, lack of jurisdiction, or challenge to the validity of legislation are convincingly argued. 

Furthermore, opponents who do not qualify as "persons interested" for post-grant opposition or revocation may still have recourse to the High Court against the rejection of their pre-grant opposition. Ultimately, the High Court will assess the specific facts and circumstances of each case to determine whether to exercise its discretionary writ jurisdiction against the Controller's order under Article 226 of the Constitution. An absolute bar on the High Court's review authority in such situations cannot be asserted.