Comparative Guides
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Results: 4 Answers
Patents
4.
Validity/post-grant review and/or opposition procedures
4.1
Where can the validity of an issued patent be challenged?
 
India
The validity of an issued patent may be challenged in three forums:

  • before the Indian Patent Office (IPO), by way of a post-grant opposition within one year of the date of publication of grant of patent under Section 25(2) of the Patents Act, 1970;
  • before the Intellectual Property Appellate Board (IPAB), by way of revocation under Section 64 of the Patents Act, 1970; and
  • before a high court by way of counterclaim to an infringement suit.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.2
How can the validity of an issued patent be challenged?
 
India
The validity of an issued patent can be challenged by the following means.

Type of challenge Where When By whom
Post-grant opposition IPO Within one year of the date of publication of grant of the patent Any person interested *
Revocation proceedings IPAB Any time after grant of the patent Any person interested *
Revocation proceedings in a counterclaim High court/district court After a suit for infringement has been filed Defendant

* Section 2(1)(t) of the Patents Act defines a ‘person interested’ as a person engaged in, or in promoting, research in the same field as that to which the invention relates.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.3
What are the grounds to invalidate an issued patent?
 
India
The law provides for separate grounds to invalidate an issued patent, depending on the forum in which the application for invalidation is filed.

The table below lists the grounds for invalidation of a patent during a post-grant opposition before the IPO and those for revocation at IPAB or through a counterclaim at the high court.

Grounds for invalidation during a post-grant opposition before the IPO Grounds for invalidation or revocation at IPAB or counterclaim at the high court
Prior publication in any Indian specification filed on or after 1 January 1912 or in any document published in India or elsewhere. Claim not new with regard to what was publicly known or publicly used in India before the priority date of the claim or claim previously published in any Indian specification filed on or after 1 January 1912 or in any document published in India or elsewhere.
Prior public use or public knowledge in India. Invention secretly used in India before priority date of the claim.
Obviousness: the invention as claimed in any claim of the complete specification is obvious or does not involve an inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim. Obviousness: the invention as claimed in any claim of the complete specification is obvious or does not involve an inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim.
Prior claiming in a patent application filed in India with an earlier priority date. Prior claiming in a valid claim of earlier priority date contained in another patent granted in India.
Insufficient description or non-disclosure of method of performing the invention. Insufficient description or non-disclosure of the best method of performing the invention.
Failure to disclose information relating to foreign applications. Failure to disclose information relating to foreign applications.
Non-disclosure or wrong disclosure of source or geographical origin of biological material used for the invention. Non-disclosure or wrong disclosure of source or geographical origin of biological material used for the invention.
Anticipation having regard to the knowledge available within any local or indigenous community in India or elsewhere. Anticipation having regard to the knowledge available within any local or indigenous community in India or elsewhere.
Invention not patentable under the Patents Act. Invention not patentable.
Invention was wrongfully obtained. Patent was wrongfully obtained.
Convention application not made within prescribed timeframe.
Patent owner is not entitled to the patent.
Subject matter of a claim is not an invention.
Invention is not useful.
Scope of claim is not sufficiently and clearly defined or claim is not fairly based on matter disclosed in specification.
Patent was obtained on false suggestion or representation.
Non-compliance with secrecy provision.
Amendment of specification obtained by fraud.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.4
What is the evidentiary standard to invalidate an issued patent?
 
India
The burden of proof rests with the person challenging the validity of the issued patent. In some instances, most commonly on the grounds of insufficiency, the burden may shift to the patent owner.

The standard at the IPO for pre-grant oppositions and post-grant oppositions is that of clear and convincing evidence. The standard at the IPAB and courts is preponderance of evidence.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.5
What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
 
India
A third party may challenge the validity of a patent through the following procedures:

  • by way of a post-grant opposition at the IPO, within one year of the date of publication of grant of the patent under Section 25(2) of the Patents Act;
  • by way of revocation proceedings at IPAB under Section 64, at any time during the term of the patent; and
  • by way of a counterclaim to an infringement suit before a high court.

However, the validity of a patent may be challenged by a third party only if it is engaged in, or in promoting, research in the same field as that to which the invention relates.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.6
Who can oppose a granted patent?
 
India
A granted patent can only be opposed by a ‘person interested’. Section 2(1)(t) of the Patents Act, 1970 defines a ‘person interested’ as a person engaged in, or in promoting, research in the same field as that to which the invention relates.

A patent can also be revoked by a high court on the petition of the central government, if the court finds that the patent owner has, without reasonable cause, failed to comply with a request of the central government to make, use or exercise the patented invention for the purposes of government within the meaning of Section 99, upon reasonable terms. Revocation of a patent is statutorily possible if the invention relates to atomic energy under Section 65; and in certain cases a patent may be revoked by the central government in the public interest under Section 66.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.7
What are the timing requirements for filing an opposition or post-grant review petition?
 
India
A post-grant opposition must be filed at the IPO within one year of the date of publication of grant of the patent.

A revocation proceeding may be filed at IPAB at any time during the term of the patent.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.8
What are the grounds to file an opposition?
 
India
The grounds for post-grant opposition are as follows:

  • wrongfully obtained patent;
  • prior publication in any Indian specification filed on or after 1 January 1912 or in any document published in India of elsewhere;
  • prior claim in a patent application filed in India with an earlier priority date;
  • prior public use or public knowledge in India;
  • obviousness;
  • unpatentable invention under the Patents Act, 1970;
  • insufficient and unclear description of the invention or method by which it is to be performed in the complete specification;
  • failure to disclose information relating to foreign applications;
  • failure to make a convention application within the prescribed timeframe;
  • non-disclosure or wrong disclosure of source or geographical origin of biological material used for the invention; and
  • anticipation having regard to the knowledge available within any local or indigenous community in India or elsewhere.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.9
What are the possible outcomes when an opposition is filed?
 
India
The three possible outcomes of an opposition are as follows:

  • The patent is maintained;
  • The patent is amended; or
  • The patent is revoked.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.10
What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
 
India
The standard at the IPO for pre-grant and post grant oppositions is that of clear and convincing evidence. The standard at IPAB and the courts is preponderance of evidence.

The burden of proof rests with the person challenging the validity of the patent. In some instances, most commonly on the ground of insufficiency, the burden may shift to the patent owner.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
4.11
Can a post-grant review decision be appealed and what are the grounds to appeal?
 
India
The decision of the IPO in a post-grant opposition may be appealed to IPAB on the following grounds:

  • incorrect application of law or fact; or
  • violation of principles of natural justice
For more information about this answer please contact: Essenese Obhan from Obhan & Associates