How to Start a Patent Opposition

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An Overview of Patent Opposition

A Patent is an integral part of IPR (Intellectual Property Rights); basically, it's an exclusive right given to the original inventor for a unique product or process that gives a distinct way of doing something or reveals a new technical solution to a technical problem. Also, Patent provides a monopoly right to the inventor to sell, copy, or make their invention. Therefore, Patent is vital only awarded to those innovations that validate the exclusive right and obey the patentability criteria. Patent Opposition proceedings are structured to contain illegal obtaining of Patents & claiming of the dizzy or petty invention. Basically, Patent Opposition is a right created under the Patent Act allowing any individual to raise an issue against the grant of a Patent. Patent Oppositions can be made or formed against an accepted Patent application or a certified innovation Patent.

What are the Grounds for Patent Opposition?

Following are some different grounds for Patent Opposition:
  • The nominated individual in the Patent application is either:
  1. Not eligible for Patent Registration for the invention or
  2. Eligible for Patent Registration for the invention but only in conjunction with some other individual.
  • That invention or innovation is not a patentable invention;
  • That the Patent specification or description filed is not a complete specification.
This means an application for Patent Registration can be opposed for reasons that:
  • The Patent is not unique or new, inventive for standard Patent;
  • The Patent is not useful; this is to confirm that Patents are issued for subject matters that work & can be used, disheartening Patents being filed purely for strategic reasons;
  • It was secretly used in the Patent area before the Priority Date;
  • Issue of Patent Specification, generally this is a disclosure requirement that applies to claims made which are not concise or brief, clear, supported by matters revealed in the specification and fail to please disclosure necessities.

Types of Patent Opposition Proceeding

There are two types of Patent Opposition Proceedings, and you can check the same below:
  • Pre Grant Patent Opposition:

Section 25 (1) of the Patent (Amendment) Act, 2005, gives Pre Grant Patent Opposition provisions. Under this provision, any individual or 3rd party or Government may challenge the Patent application and notify the Patent Controllers for Opposition, in writing against the Patent after the Patent application has been published but before the issuance of a Patent. The proceeding acts as a protective shield to confirm the Patent validity before Patents are issued to them. Moreover, Pre Grant Patent Opposition proceeds as a business approach, where opponents take it as an excellent opportunity for opposing the illegal protective rights.

Following are some grounds for Pre Grant Opposition:
  1. Wrongful attainment of the innovation (Section 15(1)(a) of the Patent Act);
  2. Anticipation by prior publication (Section 15(1)(b) of the Patent Act);
  3. Anticipation by prior claiming (Section 15(1)(c) of the Patent Act);
  4. Public use or knowledge in India before the Priority Date (Section 15(1)(d) of the Patent Act);
  5. Obviousness & requirement of innovative step in the invention (Section 15(1)(e) of the Patent Act);
  6. Being a prohibited subject matter (Section 15(1)(f) of the Patent Act);
  7. Lack of disclosure of the entire specification (Section 15(1)(f) of the Patent Act);
  8. Non-Compliance of the necessity of Section 8 or providing materially wrongful information (Section 15(1)(h) of the Patent Act);
  9. Non-filing of the Patent application within 12 months or a year of filing the 1st Patent application in a Convention nation (Section 15(1)(i) of the Patent Act);
  10. False mention or non-disclosure of the source/geographical origin of biological material (Section 15(1)(j) of the Patent Act);
  11. Anticipation concerning traditional knowledge of any community anywhere in the globe (Section 15(1)(k) of the Patent Act).
  • Post Grant Patent Opposition Proceeding:

This Patent Opposition proceeding can be filed by any individuals who are involved or encouraging research in the area of technology. Post Grant Opposition can be filed within 12 months after the issuance of Patent. The grounds of Opposition are given under Section 25 (2) of the Patent Act, 1970. Some of the grounds are wrongful attaining of the invention by the inventor, the anticipation by prior publications, traditional knowledge, use, the invention is clear to an individual in the art, non-patentable inventions, revelation of wrong details to Patent Office, non-disclosure or false revelation of the biological source, etc.

An Opposition Board is established by the Controller comprising 3 members, and one of them will be Chairman. The examiner who has dealt with a Patent application during the Patent Prosecution is not entitled to board member. The Board is given the 3 months of time to conduct an examination & submit recommendations with reasons on each ground of Opposition. The Controller fixes a date for hearing by giving 10 days to the parties to get the Board's recommendation. After hearing the parties & examining the Board's recommendation, the Controller decides the matter & notify the parties regarding their decision giving reasons thereof. The Controller can order to either change or maintain or cancel the Patent.

The opponent should file a written statement of Opposition & proof in copy. The opponent should state in a written statement;

  • The details on which the case is based;
  • Any proof;
  • The nature of its nature;
  • The relief sought.

Within 2 months of the Opposition notice's receipt, the Patent holder, if it wants to contest, will submit a writing statement along with proofs; if any is available, submit to the Patent Office along with a duplication copy to the opponent. If the Patent holder doesn’t contest this within 2 months, the Patent is considered to be cancelled.

Moreover, evidence, if any, can be filed with only the leave of the Controller. The Opposition Board inspects the Patent based on the documents submitted by the opponent & the response given by the Patent owner and gives a suggestion to the Controller with reasoning for each ground mentioned in the Opposition Notice within 3 months of the date of the documents forwarded to it.

Procedural Difference between Pre Grant and Post Grant Patent Opposition

Pre and Post Grant Patent Opposition both contain similar grounds for proceeding with the Opposition. There is nothing that eliminates a Pre Grant Opponent from subsequently filing a Post Grant Opposition. But despite the similarities, there are also various procedural differences between the two types of Patent Opposition, which are demonstrated below:

  1. The most important dissimilarity between these two opposition proceedings is that Any individual may commence pre Grant proceeding while only an individual interested can introduce a Post Grant Opposition;
  2. Section 25 (1) of the Act doesn't clearly permit the Patent applicant an opportunity to be heard in a Pre Grant Patent Opposition;
  3. Next, one of the most important differences between them is with infringement proceedings; it cannot begin at the time of Pre Grant Opposition Prosecution as the Patent is still in the application stage, whereas infringement proceedings may be initiated in Post Grant Opposition;
  4. Pre Grant Opposition is more expensive and results in quick disposal of cases on merits, thereby lessening the cost acquired in contesting the Post Grant Proceedings;
  5. Further, Indian Patent Act doesn’t openly permit the opponent to be heard in a Pre Grant Opposition. The opponent has to make a hearing request, and the rules don't detail how a hearing is to be conducted. The right of the opponent is to be heard exclusively depends on the merit of the Patent Opposition. In addition, the rules are also not clear whether the opponent will be heard in the applicant’s presence. Whereas, in a Post Grant Patent Opposition, the opponent can proceed with the case irrespective of the merit of the Opposition Notice.
  6. Pre Grant Opposition mechanism is quicker as compared to Post Grant Opposition, where hearing’s trials and extension occurs in a traditional way which happens in the Courts. Unlike Post Grant Opposition, there is no fee stipulated for filing Pre Grant Opposition.
  7. Moreover, as per the stand taken by IPAB (Intellectual Property Appellate Board) on many occasions, there is no solution against the Controller's order in a Pre Grant Opposition except to file a writ petition under the Indian constitution.
  8. The primary disadvantage of the Post Grant Opposition proceeding is that this remedy is available only via the courts, making redressal a long process and, in the case of bad Patents, permitting the owner of the Patent to enjoy a false monopoly. This is a particular concern in India, given the prolonged nature of the judicial process.

Cases and Decisions Regarding Patent Opposition

  • Godrej Soaps vs Hindustan Lever Limited: In this case, on 14th October 1992, a Patent filed by Hindustan Lever Limited in India was opposed by Godrej Soaps Limited. The Patent had two priorities of UK dates 14th October 1991 and 14th July 1992 and was issued on 18th May 1996 in India. The grounds of this Patent Opposition case were:
  1. Non-Patentability;
  2. Prior Publication;
  3. Deficiency & transparency of description;
  4. Obviousness & lack of innovative step;
  5. Prior public use & prior public knowledge.

The applicant has failed to reveal to the Controller the details required by Section 8 or has provided the information which in any material exacting was false to their knowledge. After the hearing, it was clear that the teachings of the stated exhibits were lack of proving the grounds of Patent Opposition as we mentioned above. The applicant changed the claims & conditions to make their point clear and overcome the opponent's allegations. After considering Opposition Notice, Statement & Evidence from both of the parties & hearing, the Opposition was refused.

  • Nacto Pharma Ltd. vs Novartis AG: On 17th July 1998, a Patent application was filed in India by Novartis AG, Switzerland, claiming Switzerland priority date of 18th July 1997. Upon publication, the issuance of Patent was opposed by Nacto Pharma Limited, India, on 26th May 2005. The grounds of this case were:
  1. Anticipation by prior publication;
  2. False claim;
  3. Deficiency of innovative step;
  4. Non-patentability under Section 3 (d).

The title compound was already recognised in a US Patent filed in 1993. The US Patent claimed a pharmaceutically suitable salt of the base compound. Also, the claimed salt intrinsically existed in the steadiest form of salt. Therefore, the application claims for the product & process concerning the title compound stood anticipated by prior publications. Furthermore, based on Section 30(d), the product claim to be a simple discovery of the newest form of the recognised substance. Moreover, the application had claimed Swiss priority, but Switzerland was not a convention nation on the filing date in Switzerland. Therefore, no importance of Swiss application could be claimed concerning the Indian application.

Frequently Asked Questions

Patent Opposition is an exclusive right created under the Patent Act allowing any individual to raise an issue against the grant of a Patent.

As per Section 25(2) of the Patent Act, any individual interested can file a Post Grant Opposition within 12 months of the publication date of the Patent on any prescribed grounds.

Grounds for Patent Opposition:

  • Prior Publication.
  • Prior & Public Use Knowledge.
  • Obviousness & deficiency of inventive step.

If your prior art or publication illustrates that your claims are not new, then your Patents may invalidate or revoke, which means your rights are surrendered.

Representation for Pre Grant Patent Opposition can be filed on Form 7A within 6 months from the publication date of the application.

The time limit for filing the representation for the Post Grant Patent Opposition is 12 months.

A Patent in which it is used is mischievous to the State/Prejudicial to the general public; the Patent may be revoked.

There are two main types of Patent Opposition: Pre Grant Opposition and Post Grant Opposition.

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