Patent Opposition
A patent opposition proceeding is an administrative process available under the patent law which allows third parties to formally challenge the validity of a pending patent application (“pre-grant opposition”), or a granted patent (“post-grant opposition”). One of the main objectives of the opposition system is to provide a simple, quick and inexpensive mechanism that ensures the quality and validity of granted patents by allowing an early rectification of invalid patents. In general, opposition proceedings are inter partes procedures conducted before the patent office.
Pre-grant Oppositions
Pre-grant oppositions, as per the name, are oppositions filed in respect of a patent application before the said application proceeds towards grant. Where an application for a patent has been published but a patent has not been granted, ‘any person’ may oppose the grant of such patent. Grounds under which a post-grant opposition may be filed are elaborated under Section 25(1) of the Patents Act 1970.
Upon reviewing the pre-grant opposition filed by an opponent, if the Controller is of the opinion that the application should be refused or be amended, he shall notify that effect to the applicant together with a copy of the opponent’s documents. In response, the applicant may file his statement and evidence in support of his application within three months from the date of the above notice from the Controller. On consideration of the statement and evidence from both parties, the Controller would decide whether a patent should be granted or not.
Post-grant Oppositions
Once a patent is granted, third parties have another opportunity to file an opposition. This is known as a post-grant opposition. Such opposition can be filed by any interested person before the expiry of a period of one year from the date of publication of grant of a patent. Grounds under which a post-grant opposition may be filed are elaborated under Section 25(2) of the Patents Act 1970.
Upon reviewing the post-grant opposition, the Controller shall notify the patentee where such notice of opposition was submitted. The opponent shall send a written statement setting out the nature of the opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, along with notice of opposition and shall deliver to the patentee a copy of the statement and evidence, if any. The patentee is given an opportunity to respond to the opponent’s claim and to submit any evidence supporting the patent within two months from the date of receipt of the copy of the opponent’s statement and evidence. The patentee shall also send a copy of his response to the opponent. If the patentee does not contest within the above two months period, the patent shall be deemed to have been revoked. Once the opponent received a copy of the response made by the patentee, he may, within one month, submit evidence strictly confined to matters in the patentee’s evidence, and shall deliver to the patentee a copy of such evidence.
Invalidation/ Revocation Proceedings and Appeals
The Indian Patent Law does not presume validity of granted patents. Thus, granted patents can still be challenged under the relevant provisions of law. A patent can be challenged either by filing a post-grant opposition (explained above), or by filing a revocation petition at the Intellectual Property Appellate Board (IPAB). Further, a revocation petition can also be filed as a counter-claim in a suit for infringement at the High Court. Grounds under which a revocation petition may be filed are stated under section 64 of the Patents Act 1970.
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