A patent grants the patent holder complete monopoly over his invention. The patent holder has exclusive rights over the patented invention. As such, it is very important to ensure that patents are granted only for inventions that are novel and inventive. To this end, the Indian Patent System envisages a provision whereby a third-party can oppose the grant of a patent. Section 25 of the Patents Act, 1970, provides for two kinds of opposition; Pre-grant opposition and post-grant Opposition. This blog post will explain in detail the Patent Opposition Process in India.
Grounds for filing a Patent Opposition (Pre-grant or Post-Grant)
Wrongfully obtained invention
Invention has been published before the priority date of claim.
Same invention has been published or filed prior to the Applicant’s filing.
Prior public knowledge or public use in India
Obviousness and lack of inventive step
The subject-matter is not an invention or not patentable under the Act.
Insufficient and unclear of description of the invention
Non-disclosure of information as per the requirement or providing materially false information by an applicant
Convention patent application not filed within 12 months of filing the first application in a convention country
Nondisclosure/ wrong mention of source of biological material
Invention anticipated with regard to traditional knowledge of any local or indigenous community, in India or elsewhere
Pre-grant Opposition is included in Section 25(1) of the Patents Act. As the name suggests, a pre-grant opposition can be filed after the patent is published but before the patent has been granted. The pre-grant opposition can be filed by any person. The opponent has to inform the Controller of Patents of his opposition to the grant of a patent.
Rule 55 of the Patents Rules, 2003 states that for pre-grant opposition the opponent must file the opposition in Form 7(A) at the appropriate office. It must also include a statement and evidence (if any) in support of the opposition. The opposition representation must also include a request for a hearing if the opponent so desires.
After considering the representation for the patent opposition, if the Controller is of the opinion that the Patent Application can be refused or amended, then he will give a notice of the same to the Applicant. Within three months from the date of receiving the notice the Applicant can submit his statement and evidence in support of the Application.
Upon receipt of the statement and evidence of the Applicant, the Controller may either refuse to grant the patent or require the patent Application to be amended.
If a hearing is requested, the Controller must give his decision within one month of completion of the proceedings.
The statutory provision for the post-grant opposition is Section 25(2) of the Patents Act. According to this section, a post-grant opposition can be filed after the grant of patent but before the expiry of one year from the date of publication of the grant of patent. A post-grant opposition can be filed only by a person interested. A person interested in defined under Section 2(1) (t) of the Patents Act, as” including a person engaged in, or in promoting, research in the same filed as that to which the invention relates”.
According to Rule 55A of the Patents Rules, the notice for post-grant opposition must be sent to the Controller in duplicate in Form 7. After receiving the notice of opposition the Controller must constitute an Opposition Board consisting of three members (Rule 56). This Opposition Board will conduct an examination of the notice of opposition. The Opposition Board must give its recommendation to the Controller within three months from the date on which the documents were forwarded to it. After receiving the recommendation of the Board and after giving the patentee and the opponent an opportunity for being heard, the Controller will pass an order to maintain, revoke or amend the patent.
Patent opposition system is a very effective tool that people can use to prevent the grant of infringing patents or patents that do not involve an inventive step. It prevents the existence of frivolous or unnecessary patents in the economy.