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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 person named in the patent application is one of the following:

    The innovation is ineligible for patent registration.

    The invention is eligible for patent registration, but only in collaboration with another person.

  • It is not possible to patent that discovery or invention.
  • The submitted patent specification or description is incomplete.

This means That a Patent Registration Application may be Rejected for the Following Reasons:

  • The patent is not original, novel, or innovative for a standard patent.
  • This proves that patents are only granted for innovations that are valuable and practical, discouraging the filing of patents for solely strategic purposes.
  • Prior to the Priority Date, it was employed covertly in the patent industry.
  • Issue of Patent Specification is typically a disclosure requirement that pertains to claims that are made that are not succinct or brief, clear, supported by elements disclosed in the specification, and fail to satisfy disclosure needs.

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:

  • Unlawful acquisition of the invention (paragraph 15(1)(a) of the Patent Act).
  • Pre-publication anticipation (Patent Act, Section 15(1)(b)).
  • Section 15(1)(c) of the Patent Act prohibits anticipation through prior claims.
  • Before the Priority Date, there was public usage or knowledge in India (Section 15(1)(d) of the Patent Act).
  • According to Section 15(1)(e) of the Patent Act, an invention must be both obvious and creative.
  • Being a restricted subject matter (Section 15(1)(f) of the Patent Act).
  • The specification was not fully disclosed (in violation of Section 15(1)(f) of the Patent Act).
  • Failure to comply with Section 8's requirements or furnishing false information that is material (Section 15(1)(h) of the Patent Act).
  • Failure to file the patent application within a year of submitting the first patent application in a Convention country (Section 15(1)(i) of the Patent Act) or within 12 months of such filing.
  • Biological material's source or geographical origin is incorrectly stated or not disclosed (see Section 15(1)(j) of the Patent Act).
  • Traditional knowledge of any society, everywhere throughout the world, is anticipated (see Section 15(1)(k) of the Patent Act).

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 paper works must be filed by the opponent. The opponent should make their case in writing, which includes-

  • The specifics on which the argument is built.
  • Any evidence
  • The nature.
  • The requested relief.

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 necessary papers were forwarded to it, the Opposition Board inspects the Patent based on the necessary papers 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:

  • The opposing party must submit a representation on Form-7 (A). The statement and proof supporting the opposition to the patent should be included with the representation form. Only if the IPO has previously received a request for examination of a patent application may the opponent file a representation.
  • The opposing party may also request a hearing if they so choose.
  • If the Patent Controller determines, after reviewing the opposition's representation, that it has some merit, the Controller will notify the applicant of the application for the patent of the objection.
  • Following receiving the notice of objection, the applicant must provide a response to the opponent's arguments and supporting paper works for the patent application. Within three months after the date on which the Controller of Patents' notice was received, the reply must be sent.
  • If a request for the same is made, the Controller may reject the Pre-Grant representation for Opposition of Patent and grant the Patent after taking into account the opponent's representation and the applicant's reply, along with any supporting evidence from both sides. On the other hand, if the Controller is pleased with the representation, he or she may request that the patent applicant make any necessary changes to the full set of patent specifications before moving forward with the award of the patent.

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 paper works must be submitted by the opponent.

The opponent must provide the following information in the written statement:

  • The nature of the opponent's interest.
  • The crucial information on which the case is built.
  • Relief sought.
  • Any (if any) supporting proof.

If the Patentee desires to contest, he or she must provide the Patent Office with a written statement and any necessary supporting paper works 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 necessary papers 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 necessary papers were given to the Opposition Board, the recommendations must be made by the Opposition Board.

Hearing

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:

  • The biggest difference between these two opposition processes is that anyone can start a pre-grant procedure, whereas only an interested person can introduce a post-grant opposition.
  • The Act's Section 25(1) is ambiguous about whether the Patent Applicant has a right to participate in a Pre Grant Patent Opposition.
  • One of the biggest differences is that infringement procedures cannot be started during pre-grant opposition prosecution since the patent is still in the application stage, but they can be started during post-grant opposition.
  • The cost incurred in contesting the Post Grant Proceedings is reduced because Pre Grant Opposition is more expensive and leads to swift disposition of cases on merits.
  • Moreover, the Pre Grant Opposition does not explicitly allow for the opponent to be heard under the Indian Patent Act. The rules don't specify how a hearing should be held, thus the opposing party must request one. The merit of the patent opposition determines whether the opponent has the right to an exclusive hearing. Furthermore, it is unclear from the rules if the opposing party would be heard in the applicant's presence. In contrast, the opponent in a Post Grant Patent Opposition may continue the case regardless of the viability of the Opposition Notice.
  • Pre Grant Opposition mechanisms move more quickly than Post Grant Opposition mechanisms, which involve regular courtroom procedures for hearings, trials, and extension.
  • Furthermore, IPAB (Intellectual Property Appellate Board) has always maintained that the only way to challenge the Controller's decision in a Pre Grant Opposition is to file a writ petition in accordance with the Indian Constitution.
  • The main drawback of the Post Grant Opposition proceeding is that it may only be resolved through the courts, which prolongs the process and, in the event of invalid patents, gives the patent owner a fake monopoly. Given the drawn-out nature of the legal system in India, this is a particular cause for concern.

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

The Patent Act established the sole right of patent opposition, which enables anybody to object to the issuance of a patent.

Any interested party may submit a Post Grant Opposition within 12 months of the Patent's publication date on any grounds specified in Section 25(2) of the Patent Act.

Reasons to Oppose a Patent:

  • Publication Earlier
  • Previous and general knowledge.
  • Obviousness and a lack of creative effort

Your patents may be invalidated or revoked, which means that your rights have been given up, if your prior art or publication demonstrates that your claims are not novel.

Within six months of the application's publication date, a Form 7A requesting representation for pre-grant patent opposition may be submitted.

The representation for the Post Grant Patent Opposition must be filed within 12 months of the grant date.

If a patent is used in a way that is harmful to the public or the state, the patent may be cancelled.

Patent opposition often falls into one of two categories: pre-grant opposition or post-grant opposition.

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