patent opposition

Overview :

Patent opposition allows third parties to challenge the validity of the patent application and its grant. Under the Indian Patents Act 1970, this opportunity is given to any third party to file an opposition to the grant of any patent. There are specific durations denoted in the act for the same. Section 25 of the Act deals with the Opposition Procedures.

The opposition period involves two stages

  • Pre-grant Opposition
  • Post-grant Opposition

Pre-grant opposition:

The Pre-grant opposition could be made or filed after the patent application has been published by the registry, but it should be filled before the grant of a patent. Ordinarily, a patent application will be published only after a period of 18 months from the filing date of the application or the date of priority, whichever comes earlier. In writing to the controller, a person may contest the grant of any specific patent that gets published. The controller after considering the evidence and statements submitted by the Patent applicant decides whether to grant the patent or refuse it or require an amendment to the complete specification to his satisfaction.

Post grant opposition:

The post-grant opposition could be made at any specific time after the grant of the patent but before the expiry of 1 year from the actual date of publication of a patent. Anyone can give a notice to the respective controller for a post-grant opposition. The person who gives the notice for the opposition will have to state the true nature of his interest in the matter. The Person interested must be a person who is engaged in or is simply promoting research on the same field as the related invention. It could be an organization that is manufacturing or trading interest in the goods connected to the patented article or is just having a financial interest in the manufacturing of such goods or is also possessing Patents related to the same subject. The Controller will have to constitute an Opposition Board which will have to comprise of 3 members who have conducted the examination of the Patent and submit their reports on the matter to the controller. After hearing explanations from both the parties and upon considering recommendations of the Board, the controller will decide whether the opposition is valid and inform the parties about the same with substantial reasons. If the parties are not satisfied with the decision, they can appeal to the Appellate Board.

Grounds for Opposition:

The grounds for pre-grant and post-grant oppositions are actually the same. The Act has eleven grounds on which opposition could be made.

  • Wrongful or copied claims of the invention.
  • Anticipation on the view of prior publication in India or globally.
  • Anticipation on the view of prior claims of the invention in India.
  • Anticipation on the view of prior public knowledge or public usage in India.
  • Obviousness or the lack of inventive step on the view of prior publication in India or globally.
  • Not meeting the benchmarks for being an invention or not patentable under the act.
  • Ambiguousness in the description of the invention.
  • Failure to disclose the information or provision of Misguided or false statements about related foreign filing patent applications.
  • Failure to file a convention application within the 12 months period of filing the first application in a conventional country.
  • Failure on disclosing or just wrongful mention of the source and the geographical origin of the biological material which is used for the invention
  • Anticipation on the view of traditional knowledge of any particular community anywhere in the world