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An Overview of Patent Opposition System in India

Patent Opposition System
| Updated: May 19, 2021 | Category: Patent

A Patent is a complete right given to the actual owner or inventor for an original product or a unique process that delivers a unique way of doing something unique and different or which reveals a new technical solution to a problem. It offers an ownership right to the inventor to make, use, or sell his or her product or invention. Therefore, it is vital that Patent is awarded only those innovations that explain the rights and obey the patentability criteria. Opposition proceeding is structured to contain wrongful obtaining of Patents and claiming of the flippant or slight inventions.

Laws offering under the Indian Patent Act[1] for pre and post-grant of Patent Opposition are vital to clog the illegal grant of Patent. Under Indian Patent Act, there are two different provisions when Opposition may be filed either through pre-grant Opposition or post-grant opposition provision based upon the Patent stage. The current heave in the filing of Patent in India may be attributed to the revolution in the Indian Patent System on January 01, 2005, when Indian signed the TRIPS agreement, wherein Section 15 of the Patent Act was amended in light of the TRIPS agreement to present an “integrated” system of both pre and post-grant Opposition in India. Scroll down to check more information regarding the Patent Opposition System in India.

Pre and Post Grant Opposition – Patent Opposition System in India

Pre and Post Grant Opposition
  • Pre-Grant Opposition:

The Patent (Amendment Act), 2005 (Section 25 (1)), delivers provisions for pre-grant Opposition of Patent. Under this provision, any individual or any third-party or Government may oppose the application for Patent Registration and inform the Patent Controller for Opposition, in writing against the grant of Patent after the application of Patent has been published but before the grant of a Patent. Pre-grant Opposition under the Patent Opposition System acts as a protection shield to certify Patent application validity before Patents are granted to the owner. Moreover, pre-grant Opposition proceeds as a business approach, where challengers take it as a better opportunity for opposing the illegal protective rights.

Pre-grant Opposition can be made on the ground listed under Section 25(1)(a) to (k) of the Patent Amendment Act, 2005:

  1. Wrongfully procuring the invention;
  2. Expectation to the prior application of Patent’
  3. Anticipation by prior date, initial claiming in India;
  4. Prior public understanding or public use in India;
  5. Modesty and lack of inventive step;
  6. Non-patentable subject matter;
  7. Lack of description of the innovation;
  8. Non-disclosure of information according to the need or providing materially false information by an applicant;
  9. Application of Patent Registration not filed within twelve months of filing 1st Patent application in a convention nation;
  10. Wrong mention or non-disclosure mention of the source of biological material;
  11. Invention expected concerning the traditional understanding of any community, anywhere in the globe.
  • Post-Grant Opposition: Post-grant Opposition under the Patent opposition System in India may be filed anytime after the approval of Patent but before the expiration of a period of one year from the date of publication of Patent. Under this provision, any individual interested may give opposition notice to the Controller in the given manner on any of the levels described in Section 25 of the Patent (Amendment) Act, 2005. Section 2(1)(t) of the Patent Act states “person interested” consisting of an individual involved in, or encouraging, research in the same field as that to which the invention relates. Moreover, an interested person or individual may also consist of any organization that has a manufacturing or trading or financial interest in the products concerning the patented product.

Similarly to the pre-grant Opposition of the Patent opposition System, a post-grant opposition may be filed on a number of grounds as described under Section 25(2) of the Act. It is remarkable that most of the grounds are similar to the grounds needs for filing pre-grant Opposition.

What is the Procedural Difference Between Pre and Post Grant Patent Opposition System in India?

Pre-grant and post-grant Opposition in the Patent Opposition System both includes identical grounds for preceding the Opposition, and there is nothing that eliminates a pre-grant opponent from eventually filing a post-grant opposition. But, despite the similarities, there is also a various procedural difference between the two types of Patent Opposition System, which are mentioned below:

  1. The most crucial difference between the two Patent Opposition System is that any individual may start pre-grant proceedings while only a “person interested” can introduce a post-grant opposition.
  2. The next extraordinary difference is with the infringement proceeding.  Such proceedings cannot begin at the time of pre-grant opposition prosecution as the Patent is still in the application stage, whereas infringement proceedings may be introduced in post-grant.
  3. Section 25 (1) of the Patent Act doesn’t openly permit the application of Patent Registration; an opportunity must be heard in a pre-grant opposition.
  4. Furthermore, the Indian Patents Act doesn’t explicitly permit the challenger to be heard in a pre-grant. The challenger has to make a request for a hearing, and the rules don’t detail how a hearing is to be conducted. The challenger’s right to be heard exclusively based on the Controller’s discretion, who decides the same depends upon the opposition merit. Furthermore, the rules are not clear also whether the challenger will be heard in the presence of the applicant. In comparison, the challenger in a post-grant opposition can proceed with the case irrespective of the merit of the opposition notice.
  5. Moreover, according to the stand taken by IPAB on various occasions, there are no such remedies against a controller order in a pre-grant opposition can pre-grant Opposition except to file a writ petition under the Indian Constitution.
  6. The primary drawbacks of the post-grant process are that this remedy is available only via the courts, making rectifying an extensive process and, in the case of bad Patents, permitting the Patent owner to enjoy an unjustified monopoly. This is a specific concern in India, given the prolonged nature of the judicial process.
  7. Post-grant Patent Opposition is more cost-effective, and outcome in faster disposal of cases on merits in this manner, reducing the costs suffered in contesting the post-grant proceedings.
  8. Its mechanism is way faster than the post-grant Opposition, where trials and extension of hearing happen in a conventional manner which happens in the courts. Unlike the post-grant Opposition, there is no fee specified for filing a pre-grant opposition.

Conclusion

The Patent opposition process has affected the pharma industry because the Patent applicants are now exposed to various pre-grant oppositions, which are filed by the opponents or even by a single opponent. Furthermore, there is nothing to stop a party that has filed a pre-grant opposition from afterwards filing an opposition once the Patent has been granted.

Proceedings of Opposition are also putting the excess of Patent prosecution at IPO. 2 stage Patent opposition process has encouraged fears among innovator entities, specifically in the pharmaceutical industry. It will be a challenge for India, which is appearing international economy, to meet the commercial and legal challenges suffered by the Patent Opposition System of the nation and become an attractive commercial destination for the overseas entities without infringing any of its global obligations under the TRIPS Agreement.

Read our article:An Overview of the Misuse of Patent Right Concerning Drugs

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A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

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