Opposition – is an administrative process of many jurisdictions which allows third parties to formally intervene in the patent examination process to challenge the validity of a pending patent application (pre-grant opposition) or a granted patent (post-grant opposition). Many jurisdictions around the world offer lengthy and costly litigation proceedings which is the only way by which a patent can be invalidated.
In India, a pre-grant opposition can be filed by any person after the publication of patent application but before the grant of patent under section 25(1) of the Patents Act, 1970 on the following grounds:
- Wrongfully obtaining the invention;
- Anticipation by prior publication in India or elsewhere;
- Anticipation by prior claiming in India;
- Prior public knowledge or public use in India;
- Obviousness and lack of inventive step;
- Non-patentable subject matter (u/s 3 and 4);
- Insufficiency of description of the invention;
- Non-disclosure of information or false information by an applicant (u/s 8);
- Patent application not filed within 12 months of filing the first application in a convention country;
- Incorrect mention of source/ geographical origin of biological material; and
- Anticipation of invention with regard to traditional knowledge of any community, anywhere in the world.
The Representation for opposition is made in Form-7A and it shall include a statement and evidence, if any, in support of the representation and a request for hearing if so desired. Such representation is considered only when a request for examination has been filed. On consideration of the representation, the controller sends a notice to the applicant along with a copy of such representation and if applicant desires he/ she can file a reply within 3 months from the date of notice. After considering the representation and submission made during the hearing, the Controller gives his decision either requiring the amendments in the specification or refusing or accepting the grant of patent, within one month from the completion of above proceedings.
In India, a post-grant opposition can be filed by any interested person before the expiry of a period of 1 year from the date of publication of grant of the patent under section 25(2) of the Patents Act, 1970 on the above-mentioned grounds.
The notice of opposition is made in Form-7A (along with written statement and evidence, if any) and sent to the controller and Patentee. Thereafter, the controller constitutes an Opposition Board which examines the documents and submits its joint recommendation within 3 months from the date of sending the documents to them. If the Patentee desires to contest the opposition, he/ she can file a reply statement and evidence, if any, within 2 months from the date of receipt of notice of opposition and will send a copy to the Opponent also. In case, the Patentee does not contest the opposition, then the patent is considered to be revoked. Further, the Opponent may file reply in evidence within 1 month from the date of receipt of patentee’s reply statement and evidence and copy of the same is sent to the Patentee also. After receiving the joint recommendation of the Opposition Board and after considering all the documents filed by the Opponent and Patentee, a hearing is conducted. After hearing both the parties and considering the joint recommendation, Controller gives his decision and notifies both the parties.
Benefits of Opposition proceedings
The two-stage opposition proceedings act as defensive shield to confirm the validity of patent applications/ patents before or after the grant of patent. These proceedings prevent wrongful obtaining or claiming of frivolous or bogus inventions and ensure grant of quality patents. Also, these proceedings prevent wrongful monopoly over the bogus claims and harm to the Opponent’s goodwill and reputation. Further, these avoid wasteful litigation/ revocation proceedings at later stages. In other words, these proceedings are expeditious and inexpensive means to double check the petty inventions in order to increase patent quality by providing additional input to the examination process.