Pre and post –grant opposition both contain the almost identical grounds for proceeding the opposition and there is nothing which excludes a pre-grant opponent from subsequently filing a post grant opposition. However, despite the similarities there are also several procedural differences between the two types of the opposition which are illustrated below:
- The most important difference between pre grant and post-grant opposition is that pre grant proceedings may be initiated by “any person”, while only a “person interested” can introduce a post grant opposition.
- Next remarkable difference is with infringement proceedings. Infringement proceedings cannot be started during pre-grant opposition prosecution as the patent is still in the application stage, whereas infringement proceedings may be introduced in post grant opposition.
- Section 25(1) of the Act does not openly allow the patent applicant an opportunity to be heard in a pre-grant opposition.
- Moreover, the Indian Patents Act does not explicitly allow the opponent to be heard in a pre-grant opposition. The opponent has to make a request for hearing and the rules do not detail how a hearing is to be conducted. The opponent’s right to be heard solely depends upon the discretion of the Controller, who decides the same based upon the merit of the opposition. Additionally, the rules are also not clear whether the opponent will be heard in the presence of the applicant. In contrast, the opponent in a post-grant opposition can proceed with the case irrespective of the merit of the notice of opposition.
- Furthermore, as per the stand taken by IPAB on numerous occasions; there is no remedy against an order of the controller in a pre-grant opposition except to file a writ petition under Indian constitution.
- The main drawback of the post-grant opposition process is that this remedy is available only through the courts, making redressal a lengthy process and, in the case of bad patents, allowing the patent holder to enjoy a wrongful monopoly. This is of particular concern in India, given the protracted nature of the judicial process.
- Pre grant opposition on the other hand is more cost effective and result in faster disposal of cases on merits thereby reducing the costs incurred in contesting the post grant proceedings.