An Overview of Patent Opposition
An essential component of IPR (Intellectual Property Rights), a patent is essentially an exclusive right granted to the original inventor for a special product or technique that demonstrates a new technical approach to a technical issue. Also, a patent gives the inventor a monopolistic right to produce, sell, or replicate their creation. Patents should only be granted to developments that support the exclusive right and adhere to the patentability requirements. Patent opposition processes are set up to prevent unauthorised patent acquisition and small-scale innovation claims. In essence, Patent Opposition is a legal mechanism established by the Patent Act that enables anybody to object to the issuance of a patent.
What are the Legal Reasons for Patent Opposition?
The following are some more reasons for opposing a patent:
- The innovation is ineligible for patent registration.
- The invention is eligible for patent registration, but only in collaboration with another person.
This means that a patent registration application may be rejected for the following reasons:
Several Types of Patent Opposition Proceedings
You can check the two different types of patent opposition proceedings below: -
Objection to Pre-Grant Patents
Provisions for Pre Grant Patent Opposition are provided under Section 25 (1) of the Patent (Amendment) Act, 2005. According to this clause, after the patent application has been published but prior to the granting of a patent, any person, third party, or government may contest the patent application and inform the patent controllers for opposition in writing. Before issuing patents to applicants, the proceeding serves as a safeguard to confirm the validity of the patent. Moreover, Pre Grant Patent Opposition moves forward as a business strategy, with opponents viewing it as a great chance to oppose illegitimate protective rights.
Pre-grant opposition may be made for the reasons listed below:
Post Grant Patent Opposition Proceeding
Any person involved in or supporting technological research is eligible to file a patent opposition in this case. Within a year of the patent's issue, a post-grant opposition may be filed. According to Section 25 (2) of the Patent Act of 1970, the reasons for opposition are listed. Unlawful acquisition of the invention by the inventor, anticipation by prior publications, traditional knowledge, use, the invention being obvious to one of ordinary skill in the art, non-patentable inventions, disclosure of incorrect information to the Patent Office, non-disclosure or false revelation of the biological source, etc. are a few of the grounds.
The Controller creates a three-member Opposition Board, one of whom will serve as chairman. A board member cannot be an examiner who handled a patent application during the patent prosecution. The Board has three months to conduct its investigation and make recommendations along with justifications for each cause of opposition. The parties are given 10 days by the Controller to obtain the Board's recommendation before the hearing date is set. The Controller makes a decision on the issue and notifies the parties of that decision along with the reasons therefore after hearing from the parties and considering the Board's recommendation. The Controller has the authority to modify, keep, or revoke the Patent.
A formal statement of opposition and supporting documentation must be filed by the opponent. The opponent should make their case in writing, which includes-
The patent holder must send a written declaration and proofs, if any are available, to the Patent Office within two months of receiving the Opposition notice, along with a duplicate copy to the Opponent. The patent is deemed to be cancelled if the patent holder doesn't protest this within two months.
Also, any evidence can only be submitted with the Controller's permission. Within three months of the date the documents were forwarded to it, the Opposition Board inspects the Patent based on the documents submitted by the opponent and the Patent owner's response, and it makes recommendations to the Controller with justification for each ground mentioned in the Opposition Notice.
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What Is The Pre-Grant Patent Opposition Process?
The following steps must be taken in order to file a pre-grant opposition to a patent in India:
What is the process for opposing a patent once it has been granted?
This is the process for post-grant opposition to a patent:
Establishment of an opposition board
The Opposition Board will be instructed by the Controller of Patents to investigate the opposition that the opponent has submitted. The Opposition Board has three members in total. One member of the Opposition Board's three members is chosen by the Controller of Patents to serve as chair. The Opposition Board's members are typically patent examiners, with the exception of the examiner who handled the patent application that gave rise to the opposition.
Filing of paperwork
A copy of the written statement of opposition and any supporting documentation must be submitted by the opponent.
The opponent must provide the following information in the written statement:
If the Patentee desires to contest, he or she must provide the Patent Office with a written statement and any necessary supporting documentation within two months of receiving the notice of opposition to the patent. A copy of the written statement must be provided by the Patentee to the Opponent of Patent. If the patent holder does not fight this within two months of receiving the notice of opposition, the patent will be presumed to have been revoked.
The opponent must submit the reply evidence to the Patent Office within one month of receiving the patentee's reply after obtaining it from the patentee. Any additional evidence must be submitted with the controller of patents' permission.
The documents produced by the opponent and the patentee's response will be examined by the Opposition Board. Following an examination, the opposition Board will provide recommendations to the patent controller with justification for each and every ground listed in the objection notice submitted by the opponent. Within three months of the date on which the documents were given to the Opposition Board, the recommendations must be made by the Opposition Board.
The Controller of Patent shall set a date and time to hear from both parties after receiving the Opposition Board's suggestions. The Opposition Board members are required to be present at the hearing.
The Patent Controller has the authority to order that the Patent be either preserved, amended, or cancelled after hearing from both parties, or without a hearing if neither party chooses to be heard. The Controller will also take into account the suggestions of the Opposition Board.
Pre-Grant and Post-Grant Patent Opposition: The Procedural difference
Similar reasons for continuing with an opposition are present in both pre and post grant patent opposition. Nothing prevents a Pre Grant Opponent from submitting a Post Grant Opposition afterward. However, despite their similarities, the two types of patent opposition also have a number of procedural distinctions, which are illustrated below:
Why Choose Corpbiz?
The Opposition of Patent proceedings are less complicated and more cost-effective than other invalidation processes. The Patents Act of 1970 establishes two categories of opposition, known as Pre-Grant and Post-Grant, which give third parties the freedom to contest the validity of a patent even after it has been published up to one year following its issuance. The patent opposition filing process takes a very long time. Our knowledgeable staff at Corpbiz will help you through the procedure. You will receive help from our professionals throughout the patent opposition process. Our experts will make sure that your task is finished successfully and on schedule. The patent opposition filing process takes a very long time.
Frequently Asked Questions
- Publication Earlier.
- Previous and general knowledge.
- Obviousness and a lack of creative effort