India: Contesting Grant Of A Patents At The Patent Office By The Way Of Oppositions

Last Updated: 14 March 2017
Article by Shrimant Singh

Most Read Contributor in India, December 2018

A patent being an exclusive monopolistic right over a technology given to an individual, care of a high degree is warranted towards the examination and grant of such monopolistic right. The Patents Act, 1970 ("the Act") clearly prescribes what is an "invention" under Section 2(1)(j) and what are not inventions hence not patentable as per Sections 3 and 4 of the Act. While the Examiners and Controllers examine an application for patent as per the qualifications or tests provided under the Act, the other parties are also enabled under the law to represent and oppose to grant of an application for patent.

Under the Patents Act, there are two instances at which the grant of a patent can be opposed, namely, pre-grant opposition and post-grant opposition.

Pre-Grant Opposition: Section 25(1) of the Act stipulates that where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of patent on the grounds—

  1. that the applicant has wrongfully obtained the invention;
  2. that the invention as claimed has been published before the priority date of the claim;
  3. that the invention as claimed is already claimed in an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim;
  4. that the invention as claimed was publicly known or publicly used in India before the priority date of the claim;
  5. that the invention as claimed is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim;
  6. that the claim cannot be regarded as an invention within the meaning of this Act, or is not patentable under this Act;
  7. that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
  8. that the applicant has failed to disclose the information required by Section 8 or has furnished the information which in any material particular was false to his knowledge;
  9. that in the case of a convention application, the application was not made within twelve months from the date of the first application in a convention country;
  10. that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
  11. that the claimed invention is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Rule 55 of the Patents Rules, 2003, ("the Rules") prescribes the process involved in the pre-grant opposition proceedings. The main provisions relating to initiating or defending the pre-grant opposition are:

  1. A "representation" for opposition shall be filed on Form 7(A) provided in Schedule II of the Rules, at the appropriate office with a copy to the applicant. The same shall include a statement and evidence in support of the representation and a request for hearing, if so desired by the opponent.
  2. Such representation shall be considered by the Controller only when a request for examination of the application has been filed.
  3. On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment(s), he shall give a notice to the applicant to that effect.
  4. On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice and shall also serve a copy of the same to the opponent.
  5. On consideration of the statement and evidence filed by the applicant, the Controller may either refuse to grant a patent on the application or require the complete specification to be amended to his satisfaction before the patent is granted.

Post Grant Opposition: Section 25(2) provides that after grant of a patent but before the expiry of a period of one year from the date of publication of the grant, any person interested may give notice of opposition to the Controller in the prescribed manner on the grounds as mentioned under the said provision. The grounds prescribed under Section 25(2) for post-grant opposition are the same as that in a pre-grant opposition.

Further, the Act under Section 25(2) and 25(3) provides for "constitution of Opposition Board" and "upon receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent" respectively. Rule 55A of the Patents Rules, 2003, prescribes that notice of opposition under Section 25(2) shall be filed at the Patent Office on Form 7 given in Schedule II of the Rules.

The procedure regarding constitution of the Opposition Board and its proceedings along with the steps involved in the post-grant opposition proceedings are given under Rules 56 to 62. To put the procedural steps briefly:

Rule 56 empowers the Controller to constitute the Opposition Board comprising of three members as prescribed under the sub-rules and the notice of opposition along with documents filed therewith are examined by the Board and a joint recommendation is to be given within three months from the date on which notice of opposition and documents were forwarded to them.

Rule 57 stipulates that the Opponent, along with his notice, needs to send a written statement comprising nature of his interest, the facts of the case, evidence, and relief which he seeks, further, a copy shall be served to the Patentee.

Rule 58 provides that a reply statement and evidence, if any, by the Patentee shall be filed at the IPO along with serving a copy to the Opponent, within two months from the date of receipt of written submission. In case the Patentee chooses to not reply to the opposition or fails to reply within said two months, the patent is deemed to be revoked.

Further, under Rule 59, the Opponent may within one month from the receipt of Patentee's reply file at the IPO along with serving a copy to Patentee, further evidence strictly confined to the matters in the Patentee's evidence.

Subsequent to completion of evidence and upon receiving recommendation of the Opposition Board, Rule 62 enables that the Controller, subject to the formal request(s) along with prescribed official fee, to appoint a hearing of the opposition and may require the members of the Board to be present in such a hearing. Finally, after duly hearing the parties desirous of being heard and considering the recommendation by the Opposition Board, the Controller shall decide the opposition and notify his reasoned order/decision to the parties.

Accordingly, the enabling Section 25 of the Act and corresponding Rules, prescribe as to how to file opposition against grant of a patent and steps which shall be followed during the opposition proceedings. Apart from the literal difference in time to oppose [i.e., before or after grant], there are other salient differences which shall be kept in mind by both the

parties - Opponent and the Applicant/Patentee:

  1. Who can file the opposition: While pre-grant opposition can be filed by any person, the post-grant opposition can be filed by a person interested. It is pertinent to note that the Act, under Section 2(1)(t) also defines "person interested" as a person engaged in, or in promoting, research in the same field as that to which the invention relates. Therefore, an additional qualification is placed under the post-grant opposition, that the Opponent needs to satisfy/establish before the Controller or Opposition Board that it is a person interested within the meaning of the Act.
  2. When to file and procedural timelines: While a pre-grant opposition can be filed at any time after publication of the application till the grant of patent, a post-grant opposition shall be filed within one year from the date of publication of the grant of patent. Further, a pre-grant opposition along with evidences, etc. is to be considered by the Controller only after request for examination has been filed in an application for patent, whereas the post-grant opposition is carried out as per the procedure and timeline prescribed under Rules 56 – 62 as detailed above.
  3. Filing of reply evidence by Opponent: In a post-grant opposition, the Opponent is given an additional opportunity to submit evidence in reply to evidence of the Patentee, whereas, in pre-grant the opponent needs to furnish all evidence and also request for hearing if desired at the first instance itself, i.e., along with its notice of opposition.
  4. Opposition Board: There is a specific provision of constitution of the Opposition Board under post-grant opposition proceedings and the recommendation of the Board is to be taken under consideration by the Controller. The same is not the case with respect to the pre-grant opposition.
  5. Hearings: How the hearing is to be conducted during a post-grant opposition is specifically prescribed under Rule 62, however, with respect to pre-grant opposition no such provisions are laid out.

While one cannot take sides as to the more effective way to contest the grant of a patent, nevertheless, it is advisable not to leave out an opportunity to oppose by way of pre-grant opposition and to represent the case strongly at the first instance itself, that too when the application is pending consideration before the Examiner and the Controller.

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.

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