Patent Opposition in India

Patent opposition, if used properly, is an important tool to prevent the grant of frivolous patents. Although the same can be achieved by revocation and other litigious methods, opposition serves as a more cost-effective way. However, this raises question of the misuse of opposition to prevent patents with great competitive value thereby effecting the business of competitors. Thankfully, the opposition procedure in India has its own checks and balances to address such fears.

Once a granted patent passes the opposition procedure it acquires a higher patent value. There are two kinds of patent opposition process at two different stages of patent prosecution in India, they are:

• Pre grant opposition
• Post grant opposition

Types of Patent Opposition Proceeding

• In a pre-grant opposition, third parties are given the opportunity to oppose the grant of the patent, just after the publication of the patent application. Anyone can file an opposition in the case of a pre-grant opposition and no fee is required to be paid.
• In a post grant opposition, an interested party can oppose after the patent is granted. It should be within 1 year of the date of grant of patent. A post grant opposition is not as common as a pre grant opposition which is more common and cost-effective.

Pre-grant Opposition proceedings: Grounds & Procedures

As per Section 25(1) of the Patents Act, 1970, any person may, in writing, oppose the grant of a patent after the patent application is published. The grounds for filing a pre-grant opposition are stated in section 25(1) (a) to (k). They are as follows:

• The invention is wrongfully obtained.
• Publication of invention before the priority date.
• Prior claiming of invention in other specification.
• Invention is publicly known or publicly used in India.
• Invention is obvious and lacks any inventive step.
• Invention is not patentable.
• Invention is not clearly and sufficiently described in specification.
• Fails to disclose information regarding foreign application.
• Convention application file after 12 months of being filed in the convention country.
• Specification does not give the source of biological material.
• Invention is based on knowledge of the local or indigenous community.

The opposition is filed in Form 7(A) with a statement and evidence supporting the opposition. The opponent can also request a hearing. A period of 6 months is given from the date of publication of the application. It is done to invite any opposition from third parties, giving them an opportunity to object the grant of the patent. A representation for opposition can only be filed if a request for examination of a patent has already been made. The Controller after considering the representation decides whether there is any merit in the opposition filed and then sends a notice of opposition to the applicant. After receiving the notice, the applicant should file a reply to the representation for opposition with evidence, within 3 months of receiving the receipt of notice.

The Controller after considering both the representation for opposition and the applicant’s reply may either reject the opposition and grant the patent or ask the applicant to amend the specifications before proceeding to grant the patent.

Post-grant Opposition proceedings – grounds & procedures

As per Section 25(2) of the Patents Act, any interested person can file a post-grant opposition within 12 months of the date of publication of the grant of a patent by giving notice of opposition to the controller. The grounds to initiate a post grant opposition is identical to that of the pre-grant opposition. After the Controller receives the receipt of the notice, the Controller informs the patentee of the opposition. Thereafter, the Controller orders the Opposition Board to examine the opposition and give its recommendations.

Filing documents

The opponent should file a written statement of opposition and evidence in duplicate copy. The opponent in the written statement should specify:

• The nature of its interest in the patent.
• Facts on which the case relies.
• Evidence

The patentee should submit a written statement along with evidence to the patent office and a copy of the written statement should be sent to the opponent. The same should be done within 2 months of receipt of notice of opposition. If the patentee does not contest within 2 months, the patent is revoked.

Thereafter, the opponent may file reply evidence to the patent office within 1 month of receiving the patentee’s reply statements.

Opposition Board

The Opposition Board has three members. Out of the three, one member is nominated by the Controller to chair the board. The members of the board are generally patent examiners. The documents submitted by the patentee and the opponent is examined by the Opposition Board. The Board then, suggests a recommendation to the Controller with reasoning for each ground mentioned in the notice of opposition.

Earlier, the recommendations of the Opposition Board were never disclosed to the parties. This changed in Cipla Ltd. V. Union of India where the Supreme Court held that the Opposition Board must furnish its recommendations to the parties so that they can strengthen their contentions before the Controller.

Hearing

After receiving the recommendations of the Opposition Board, the Controller fixes the date and time for hearing both parties. The members of the Opposition Board are also present at the time of hearing. After considering the Opposition Board’s recommendation and hearing both parties, the Controller orders that the patent be either maintained, amended or revoked.