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Patent Opposition Process in India

Let’s take a look at the patent opposition mechanism process in India. Patent opposition mechanism is an opportunity to oppose the grant of patent either before the grant of the Patent by filing Pre-grant opposition or within a year after the grant of the Patent by filing Post-grant opposition.

An opposition proceeding is an administrative procedure under the jurisdiction of patent law which allows third party to formally challange validity of pending patent applications and challenge the already granted patent applications. Indian patent opposition system profer two kinds of patent opposition process at two different stages of patent prosecution. They are:

  1. Pre-Grant Opposition
  2. Post-Grant Opposition

Pre-Grant Opposition

Patent opposition, can act as an influential means to restrict the grant of puerile patents. Pre-grant opposition is elucidated in Section 25(1) of Patent (Amendment) Act 2005. The grounds citied under Section 25(1) are as follows:-

  1. Unlawful inheritance of the invention
  2. Prior publication , priority date and claim anticipation
  3. Already known and used in public domain
  4. Seems obvious and does not involve any inventive step
  5. Non –patentable subject matter under Section 3(k)
  6. Obscure and inadequate representation of the invention
  7. Failure of disclosure under Section 8 of the Act or furnishing false information
  8. Patent Application not filed within 12 months from the priority date of conventional country.
  9. Non disclosure/wrong mention of source or geographical origin of the biological material used in the invention
  10. Anticipation in view of traditional knowledge of a community (oral or otherwise), globally

The patent opposition procurement mechanism can be filed by any third party within the pronounced term of six months from the date of publication to the Controller General of Patents by presenting an opposition representation. The representation of opposition can be filed through Form 7 (A), along with a statement and relevant evidence to substantiate the claims made therein. The controller considers the pre-grant opposition representation only when a request for examination of the patent application has been filed. After considering the representation , if the controller finds merit in the representation then the applicant (i.e., the Patentee) is notified. After receiving the notice applicant should revert within three months from the date of notice and a copy must also be sent to the opponent.

The controller after considering the opponent’s representation and applicant’s reply, may either reject the pre-grant application representation and grant or suggest some amendments. Either way, final judgment must be communicated to the applicant within one month of the proceedings.

Post-Grant Opposition

Post-grant opposition is elucidated in Section 25(2) of Patent (Amendment) Act 2005. Any person contesting the verdict can file post-grant opposition in the prescribed format within 12 months from the date of publication of the grant of the patent on any of the pre-specified grounds, by giving a notice of opposition to the Controller General of Patents. The grounds specified under Section 25(2) are as follows:-

  1. Unlawful inheritance of the invention
  2. Prior publication , priority date and claim anticipation.
  3. Already known and used in public domain
  4. Seems obvious and does not involve any inventive step
  5. Non-patentable subject matter under Section 3(k)
  6. Obscure and inadequate representation of the invention
  7. Failure of disclosure under Section 8 of the Act or furnished false information.
  8. Patent Application not filed within 12 months from the priority date of conventional country.
  9. Non disclosure/wrong mention of source or geographical origin of the biological material used in the invention
  10. Anticipation in view of traditional knowledge of a community (oral or otherwise), globally

The grounds of post-grant opposition are identical to those for pre-grant opposition.

After the receipt of notice of the opposition application, the Controller informs the patentee with immediate effect and orders an opposition board to examine the opposition and give the controller its recommendation. The opposition board typically consist of three members with a chairman. The examiner may or may not be a member of the board. The Opposition Board conducts the examination based on the evidences from both the parties( i.e., the applicant and the oppose). After which a recommendation is proposed by the board to the controller. A hearing notice is given to both the parties at least 10 days prior to the hearing date. A prescribed fee is to be submitted by the party intending the hearing.

The Opposition Board decides the issue after giving reasonable opportunity of hearing to both the parties. The Opposition Board can order either to maintain or amend or revoke the patent as ordered by the Controller General of Patents.

After hearing from both the parties in combination with the Opposition Board’s recommendation, the Controller decides whether the patent ’s grant is accepted or revoked, or can also requisite amendments to the specification.

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