Opposition proceedings are the litmus test for an invention claiming patent protection under the Patent law. Since patents are the instruments of monopoly, it is imperative that this monopoly is tolerated only if strictly justified by the public policy and the national legislation. From the perspective of the society at large, opposition filters the bogus and frivolous claims for patent protection and from the standpoint of the innovating industry it thwarts the erosion of their commercial profits. Keeping in sight the enormous significance of opposition in the grant of patent, this article shall delve into the metamorphosis of the opposition system in India, stages of opposition and efficacy of the present provisions in the context of the paradigm shift of patent regime in certain technologies.
Evolution of Opposition system in India
Under the original Patents Act, the opposition to the patent could be made only after the publication of the acceptance of the complete specification. Considering the time lines for filing complete specification, examination report, putting the application in order after examiner’s report, any person interested had to wait for a period of 45 months before filing an opposition. The status quo was maintained till the patent Amendment Ordinance 2004, overhauled the opposition system by introducing the Pre-grant Opposition proceedings.
By virtue of amendment in 2004, any person could make a representation of opposition after the publication of the patent application in the Official Gazette. As the publication of the application generally took place after 18 months from the date of filing the application or date of priority whichever was earlier, the waiting period was significantly reduced. However, pre-grant opposition was far from being perfect. The major draw back of Pre grant opposition was that the grounds were circumscribed only to the question of patentability and wrongful disclosures. The Grounds for Pre-grant Opposition vis-à-vis post- grant opposition where whittled down.
The myopic reach of the pre-grant opposition was severely flayed by all and sundry. Consequently, when the Amendment Act of 2005 was replaced for the Ordinance, the grounds of pre-grant were magnified to include all those that formed the part of the post-grant opposition.
Stages of Opposition
There are two stages in which the opposition can be launched viz: Pre-grant stage and the Post-grant Stage. The Pre grant opposition can be made at any time after the patent application has been published but before the grant of patent. Ordinarily, a patent application is published only after a period of 18 months from the date of filing the application or date of priority whichever was earlier. The Post grant opposition can be filed at any time after the grant of patent but within a period of 12 months from the date of publication of grant of patent.
The difference between the two oppositions is miniscule. While ‘any person’ can file the former only the ‘interested person’ can file the latter. In the latter case the person desiring to give the notice of opposition must demonstrate specific interest in opposing the application. Interested person would include any person engaged in, or in promoting, the research in the same field as that to which the invention relates. Another important difference between the two stages of opposition is that the pre grant opposition is that procedure. The pre grant the Controller examines opposition alone whereas the Opposition Board that comprises three members examines the post grant opposition notice.
Grounds for Opposition
The grounds for both the pre grant and post grant oppositions are the same. The Act enumerated eleven grounds on which opposition can be made, chiefly among them are:
(a) Wrongful obtaining of the invention; (b) lack of novelty; (c) Prior public knowledge or public use; (d) Invention is not patentable; (e) invention is anticipation having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere etc.
The Pre grant opposition is made by way of ‘representation’ to the Controller of Patents within a period of three months from the date of publication or before the grant of patent whichever is later. The representation should contain a statement and evidence if any in support and a request for hearing if so desired. However, the Controller shall not consider the representation unless the request for examination of the application has been filed. If on the perusal of the representation, the Controller is of the opinion that the application for the grant of the patent should be refused or the application should be amended, he shall give a notice of the opposition to the applicant. The applicant has one-month time from the date of the receipt of the notice to file statement and evidence supporting the application. After considering the representation and submission and hearing the parties, the controller shall simultaneously either reject the representation and grant the patent or accept the representation and grant the patent. The Controller is required to deliver his decision ordinarily within a period of one month from the date of completion of the proceedings.
The post grant opposition is made by way of ‘notice of opposition’. The opponent must give the notice of opposition in the prescribed form to the Controller of Patents in duplicate. Along with the notice, opponent shall send a written statement in duplicate setting out the nature of his/her interest, the facts on which he/she bases his/her case, the relief that he/she seeks and evidence (if any) and shall deliver a copy thereof to the patentee.
Upon receiving the notice, the Controller shall constitute an ‘Opposition Board’ that consists of three members and shall nominate one of the members as the Chairman. The examiner who has dealt with the impugned patent application at the time of the grant is disqualified from being a member. The Opposition Board would examine the notice of opposition and shall forward a report within a period of three months from the date on which the documents were forwarded to it.
If the patentee desires to contest the notice of opposition, he/she shall leave the reply statement setting out fully the grounds upon which the opposition is contested and evidence within a period of two months from the date of receipt of the opponent’s written statement and notice. The patentee shall also forward a copy of his statement and evidence to the opponent.
The opponent has the opportunity to rebut the case of the patentee. He/she may within a period of one month of the receipt of the patentee’s reply statement and evidence leave evidence strictly in reply confined to matters in the patentee’s evidence. After this stage evidence cannot be delivered except with the leave of the Controller.
After the completion of presentation of evidence and after receiving the recommendations from the Board, the Controller shall fix a date for hearing. Both the parties shall be given a notice of not less than 10 days of such hearing. If either of the party desires to be heard, it shall give a notice along with the prescribed fee to the Controller. After hearing both the parties the controller shall give a reasoned decision.
The two-tier opposition system created by the Patent Act adequately addresses the post TRIPS concerns of the generic pharmaceutical industry in India. The similar grounds for opposition, in both pre-grant and post-grant opposition, in principle, provide two oppositions for a case. Even though the patent prosecution procedure has become complicated and protracted, the strong opposition system has been well received. The importance of opposition has increased manifold in the light of the new product patent regime in India. The processing of mailbox applications will lead to innumerable opposition proceeding being initiated as the stakes in certain sectors like pharmaceuticals are very high.
© Lex Orbis 2005
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.