A patent opposition is a way by which any third party may review the patentability criteria or validity of a pending patent application and also that of a granted patent.

The Indian patent law provides an opportunity to the public to challenge the pending patent applications and granted patents by filing an opposition with the Indian patent office. The Indian patent law provides two kinds of patent oppositions proceedings. An opposition filed before the grant of a patent is called a pre grant opposition and an opposition filed after the grant of a patent is called a post grant opposition.

In India, the opposition proceedings take place before the Controller General of Patents. The major advantage of opposition proceedings with the Indian patent office is that the whole process is strictly time bound, less costly and quicker than litigation proceedings.

Section 25(1) of the Act deals with Pre-Grant Opposition and Section 25(2) deals with Post Grant opposition.

Pre-Grant Opposition: Section 25(1) of the Patents Act, 1970, states 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 following grounds1 :

  1. wrongfully obtaining the invention;
  2. the claimed invention has been published before the priority date of a claim in any specification filed in India on or after January 01, 1912, or in any other documents in India or elsewhere, subject to the limitations on anticipation under Section 29 Patents Act, 1970;
  3. the invention was previously claimed in India having an earlier priority date i.e. anticipation by prior date, prior claiming in India;
  4. publicly known or publicly used in India before the priority date of that claim;
  5. obviousness and lack of inventive step;
  6. non patentable subject matter;
  7. complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
  8. non-disclosure of information as per requirement by Section 8 or has furnished false information;
  9. where priority of convention application is claimed, the application was not filed within 12 months from the priority date of first application;
  10. nondisclosure or wrong mentioning of the source and geographical origin of the biological material used for the invention;
  11. anticipated by the traditional knowledge in India or elsewhere.

Procedure for Pre Grant Opposition: Rule 55 of Patents Rule, 2003, lays down the procedure to be followed for pre grant opposition. Any person can file a pre-grant opposition by way of a representation to the Controller against the grant of patent based on any of the grounds mentioned above, wherein:

  • Representation for opposition shall be filed in Form 7(A) may be given at the appropriate office along with a statement and evidence in support of the opposition.
  • The Controller shall forward the notice along with representation to the Applicant. Upon receiving the representation, Applicant, if desires may choose to reply to the representation within three months from the date of notice.
  • Controller may either reject the opposition/ representation or require the amendment of complete specification within one month of receiving the reply from the Applicant.

Post Grant Opposition: Section 25(2) of the Patents Act, 1970 and Rules 55-62 of the Patents Rules, 2003, deal with Post Grant opposition. Post-grant opposition can be filed at the appropriate office by any interested person2 within 12 months from the date of publication of the grant of patent in the Indian Patent Journal.

The grounds for both pre-grant and post-grant oppositions in India are the same. Nevertheless, there are several procedural differences between filing the two types of opposition. In pre-grant opposition, any person may challenge the application for grant of patent, whereas only an interested person can file a post-grant opposition. Notice of opposition is filed in Form 7. Once the notice of post grant opposition is received at the Patent Office:

  • The Controller shall constitute an Opposition Board consisting of three members and nominate one of the members as the Chairman of the Board. An examiner who was involved in the prosecution of the application cannot be a member of the Board.
  • The patentee may reply to the opposition notice within two months of receiving the notice. If the patentee does not reply to the opposition notice, then the Patent is deemed to be revoked.
  • Opponent may also file evidence in reply to the response from the patentee within one month from the date of receipt of reply by the Patentee.
  • The Board conducts an examination of the opposition notice along with replies submitted by the patentee and the opponent.
  • The Board submits a report within three months from the receipt of all the documents and evidences.

A hearing shall be scheduled by the Controller between the patentee and the opponent(s) wherein all the statements and evidences submitted by the concerned parties shall be discussed. Based on the said discussion and recommendation of the opposition Board, the Controller shall decide the outcome of the opposition notice and notify the parties of his decision.

Unlike pre-grant opposition, there is an official fee stipulated for filing a post-grant opposition. However, pre-grant opposition mechanism is faster than post grant opposition. Also, patent opposition in an early stage would only help the patent office to grant quality patents.

Footnotes

1. Section 25(1) of the Patents Act 1970.

2. Section 25(2) of the Patents Act 1970.

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.