For invalidating a patent, there are time consuming and expensive patent litigation proceedings in various jurisdictions around the world. Another way for invalidating a competitor’s patent application / granted patent can be through patent pre and post grant opposition proceedings. That is, one may challenge a pending patent application (prior to grant) or after patent is granted. Indian Patent Act 1970 provides opposition provisions wherein a party (“opponent”) may oppose a patent application before grant of patent which is called “pre-grant opposition” and the oppositions which are filed after the grant are called “post-grant opposition”.
Patent Opposition Provisions
In India, both oppositions (pre- grant and post-grant), proceedings takes place in front of Controller General of Patents, India. The main advantage of filing opposition proceedings in Indian Patent Office is that it is time-specific and therefore the interested parties/opponents need not to undergo time consuming expensive lengthy procedures as conducted in Courts. The involved cost in oppositions is also minimal as compared to litigation cost in Courts.
The pre-grant opposition provides detailed information to patent examiner which could prevent grant of patent for ineligible patent matter which does not qualify either patentability criteria or other procedural/ formality requirements as per Indian Patent Act. Further, in pre-grant proceedings, hearing is not mandatory, however, in post-grant proceedings, based on hearing, the controller takes decision for a patent.
Sections 25(1) and 25(2) of the Indian Patents Act 1970 discloses grounds for proceedings before the Controller General of Patents, India. The grounds for pre-grant and post-grant oppositions are almost same and there is no restriction for filing pre-grant opposition thereafter filing post-grant oppositions; however, there are few procedural differences between the two oppositions.
According to Patent Amendment Rules 2016, once a patent application gets published, any person can file a pre-grant opposition before grant of the patent by filing Form 7A (under Sec. 25(1)). There is no official fee for filing pre-grant opposition. One needs to file and submit written representation to the Controller of Patents including statement and evidence(s). The applicant is given three months to file a reply to representation from the receipt of notice from the Indian Patent Office. Based on the representation submitted by opponent and reply submitted by the applicant, the controller may schedule hearing, if required. The Controller may either refuse or grant the patent application; or suggest requests for amendment of specifications/claims to the applicant after completion of opposition proceedings.
Any interested person as defined under Section 25(2) of the Indian Patents Act, may file notice of opposition i.e. with prescribed Form 7 within one year from grant date which is mentioned in Patent Journal i.e. Date of Publication of Grant along with payment of prescribed official fee. The notice of opposition must disclose following items:
- The nature of the opponent’s interest;
- The facts under which opposition is done; and
- The relief which the opponent seeks
Thereafter, patentee may challenge the opposition by filing a reply statement within two months from the receipt of the opposition notice. After that, the opponent may file further evidences within one month of receipt of reply by the patentee. In case where the patentee do not submit reply of opposition notice, then in absence of any reply by the patentee, the patent may be deemed to be revoked/ abandoned.
On receipt of a notice of opposition, the controller may thereafter form an opposition board, which further comprises of three members, including one chair member. The opposition board analyses the opposition facts, opposition statement in detail and then sends its recommendations to the controller within three months. Based on the recommendations of the opposition board, the controller takes his decision, however these recommendations are not binding opinion to the Controller, but if the controller is of opinion that is contrary to the recommendations of the opposition board, then the controller passes a reasoned order which contains his or her analysis and detailed analysis. The controller may also schedule a hearing between both parties and takes a decision for the patent to be revoked, maintained or amended.
The final decision taken by the controller of patent related to regarding a pre-grant or post-grant opposition may be further appealed to the Intellectual Property Appellate Board (IPAB). The time limit for making such appeal is within three months of the date of the decision..
- Grounds of Opposition:
Section 25 discloses various following grounds for opposition:
- Lack of novelty (i.e, the invention was previously published in India or elsewhere, or was previously claimed in India i.e. anticipation by prior date, Prior claiming in India).
- The invention formed part of the prior public knowledge or the prior public use or traditional knowledge of any community.
- Obviousness and lack of inventive step i.e. the invention is obvious and lacks inventive step.
- Ineligibility of invention (i.e., the subject of a claims does not constitute an invention within the meaning of the Patents Act or is not patentable under the act).
- Failure to disclose information or furnishing false information relating to foreign applications filed by the applicant for the same or substantially the same.
- Wrongfully obtaining the invention.
- Insufficiency of description of the invention.
- Non-disclosure of information as per the requirement or providing materially false information by an applicant.
- Patent application not filed within 12 months of filing the first application in a convention country.
- Nondisclosure/ wrong mention of source of biological material.
- Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
- Statistics – Pre-Grant Patent Oppositions
The Annual Journal report issued by the Intellectual Property Office i.e. Controller General of Patents, Designs, Trademarks and Geographical Indications office report 2018-19 reveals that a total number of patents which were published under Section 11A were around 46899 during the reporting year (2018-19), while number of pre-grant oppositions which were filed by the opponents was around only 260, that constitutes around 0.55% of the total published applications. Also, the below data reveals since 2013 to 2016 there has been considerable growth in the trend of count of pre-grant oppositions i.e. 0.98%, 0.91% and 0.69%, respectively.
|Year||Number of Patent Publication||Number of Pre-grant Opposition||Pre-grant opposition / Patent Application Publication (%)|
Based on the analysis done on available data captured by the Indian Patent Office’s online discloses that the major grounds on the basis of which both pre-grant and post-grant opposition were filed last year were “The invention constitutes non patentable subject matter” and the “invention lack inventive step”. Also, the formality objection ground relating to Section 8 was also noticed extensively. In the pharmaceutical field, the grounds of opposition were related to the subject matter is non-patentable under Section 3 (d) of the Patents Act. Here, the opposing party is required to prove that the claimed compound is only a mere derivative of a known substance or claimed invention is new property or new use for a known substance or of the mere use of a known process, Such machine or apparatus as claimed unless such known process results in a new product or employs at least one new reactant.
India’s patent law provides provision for both pre-grant and post-grant opposition. This provides efficient and effective method for preventing or revoking the grant of a non-eligible patent. The provision of opposition proceedings also adds to the backlog of patent prosecution at IPO. These opposition also may delay in the grant of the patents. Furthermore, a pre-grant opponent may also file a post-grant opposition after the patent grant. The opponent may also file IPAB appeal if not satisfied by IPO decision.
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