Patent opposition in India can be done, either before the patent is granted, by filing pre-grant opposition by representation, or after the grant of the patent within a year, by filing a post grant opposition.
Pre-grant Opposition can be filed by any person after publication of the application in the Indian Patent Journal till the grant of the patent. The grounds of opposition are provided under section 25 (1) of the Indian Patent Act 1970 which are:
■ Non-compliance of patentability requirements.
■ Non-disclosure or wrongful disclosure of genetic resources or traditional knowledge
Pre-grant opposition is considered only after the filing of a request for examination by the applicant or any other party. The representation may be given at the appropriate office along with a statement and evidence in support of the opposition. A hearing can also be requested, if desired, but it is not mandatory. If the Controller decides that the application needs amendment or rejection, a notice shall be given to the applicant in this regard, which he must reply within a period of one month from the date of the notice, with a statement and evidence in support of his application. The case shall be decided normally within a month, on completion of the proceedings.
Post-grant Opposition can be filed at the appropriate office by any interested person within 12 months from the date of publication of the grant of patent in the Indian Patent Journal. The grounds of opposition as provided under section 25 (2) of the Patent Act 1970, are as follows:
■ The patentee or the applicant wrongfully obtained the invention from the opponent or a person from whom the opponent derives title;
■ The invention was published before the priority date, subject to the limitations on anticipation under section 29 Patents Act, 1970;
■ The invention was previously claimed in an Indian application having an earlier priority date;
■ The invention was publicly known or publicly previously used in India and if an invention relates to a process then it shall be deemed to publicly known or publicly
used in India when a product made by that process had already been imported into India before the priority date;
■ The invention lacks any inventive step over any prior publication or over any prior use in India;
■ The subject matter of the invention is not patentable under the Patent Act 1970;
■ The disclosure of the invention or the method by which it is to be performed is not sufficient and clear;
■ The patentee has failed to disclose or has furnished false information regarding foreign applications;
■ There is no disclosure or wrong mentioning of the source and geographical origin of the biological material used for the invention;
■ The invention is anticipated by the tradition knowledge in India or elsewhere.
The grounds for both pre-grant and post-grant oppositions in India are the same and there is nothing which prohibits a pre-grant opponent from subsequently filing a post-grant opposition. Nevertheless, there are several procedural differences between the two types of opposition. In pre-grant opposition, any person can move the representation, whereas only an interested person can file a post-grant opposition. The opportunity for hearing is not mandatory in a pre-grant opposition. Also, there is no remedy against an order of the Controller in a pre-grant opposition, except to file a writ petition before the High Court.
Post-grant opposition can be brought within one year of the grant of the patent. The notice of opposition is to be given in the prescribed form at the appropriate office along with a written statement setting out the nature of the interest of the opponent, the facts upon which the opponent bases his case, the relief which the opponent seeks, and the evidences. One copy each of the statement and evidences is to be provided to the patent holder.
In reply to the notice of opposition, the patentee should submit a statement setting out fully the grounds upon which the opposition is contested along with evidence in support of his case. The patentee has to reply within two months from the date of receipt of the copy of the written statement and opponent's evidence. The patentee has to deliver a copy of his statement and evidence to the opponent. The opponent has to reply within one month from the date of delivery to him of a copy of the patentee's reply statement and evidence. The opponent has to provide a copy of reply evidence to the patentee.
The Opposition Board is constituted by the Controller consisting of three members. One of them shall be chairman. The Examiner who has dealt with the application for patent during the proceeding for grant of patent is not eligible to be appointed as a member of the Board. The Opposition Board conducts the examination of the notice of opposition along with documents such as statements and evidences, and submits a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them. The Opposition Board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition Board can order to either maintain or amend or revoke the patent.
On completion of the evidence, and on receiving the recommendation of Opposition Board, a date and time for the hearing of the opposition may be fixed, which shall be notified to the parties at least 10 days in advance. The party who desires to be heard has to inform the Controller, by a notice along with the prescribed fee. After hearing the party or parties desirous of being heard, and after taking into consideration the recommendation of Opposition Board, the opposition shall be decided and the decision shall be notified to the parties giving reasons therefor.
PMG ASSOCIATES
Advocates, Patent & Trademark Attorneys
EF7-10, Vasanth Nagar, Palarivattom
Cochin-682 025, INDIA
Tel:+91484 2337856 / 6457856
Fax :+91 484 2347893 / 2337057
E-Mail : info@pmgip.com