Patent Opposition in India

29 October 2012

Like other advanced patent systems, the Indian patent system has safeguards to ensure that patents are granted only on eligible subject matter. The Indian Patents Act has provisions which enable a third person to challenge the grant of a patent through pregrant and post-grant oppositions, and through patent revocation. This article provides a brief overview of patent oppositions in India.

Pre-grant opposition is somewhat similar to third party submission of information in some other jurisdictions. A pre-grant opposition may be initiated by filing of a representation by “any person” after a patent application has been published and until it has been granted. Recently, in the High Court of Delhi, in Snehlata Gupte v. Union of India and Others and seven other matters, it was held that date on which the Controller passes an order in the file accepting the application is the date of grant instead of the date of entry in the Register of Patents, as was understood to be the case before this order. The Judge came down heavily on the practice of multiple related parties initiating a series of oppositions for the same matter, calling such oppositions an abuse of law and imposing a penalty on the petitioners.

The Patents Act prescribes certain grounds for initiating pre-grant opposition. These grounds include wrongful obtaining of the invention, prior publication of the invention in India or elsewhere, prior public use or knowledge in India, lack of inventive step in the invention, non-patentability of the invention under the Act, unclear and insufficient description of invention in the complete specification, failure of the applicant to furnish the mandatory details of the corresponding foreign applications, and anticipation of the invention with regard to the knowledge available with any local or indigenous community in India or elsewhere. Other grounds include failure of the applicant to file a convention application within 12 months of the first application or failure of the application to disclose the source or geographical origin of biological material used for the invention.

The representation for pre-grant opposition includes a statement and may include evidence supporting the representation. Such a representation is considered only after a request for examination of the patent application has been filed. Upon consideration of the opponent’s representation, the Controller gives notice to the applicant along with a copy of the opponent’s representation. In reply, the applicant may file his statement and possibly evidence supporting his application. The opponent may be heard by the Controller, provided a prior request in that regard has been made by him. Finally, upon considering the applicant’s statement, the Controller may accept the representation and refuse to grant the patent or may require amendment in the patent application or the Controller may reject the representation and grant the patent. However, there are no specific provisions in the Act regarding appealability of such orders of the Controller. Recently, in a writ petition filed by Yahoo! against the Controller’s order on a pregrant opposition of Rediff.com India, the Madras High Court has decided that the Controller’s order in the pre-grant opposition is appealable to the Intellectual Property Appellate Board (IPAB).

The Patents Act also provides that a post-grant opposition may be initiated by filing of a notice of opposition by “an interested person” after the grant of patent but before expiry of one year from the date of publication of the grant of patent in the Patent Office Journal. For this purpose, an interested person is one who is engaged in or in promoting research in the same field as that of the invention.

The grounds for post-grant opposition are similar to those for pre-grant opposition. The notice of opposition is to be accompanied with a written statement specifying the opponent’s interest in the patent, facts on which his opposition is based and relief sought. The notice may also be accompanied by evidence. Upon receiving the notice of opposition, the Controller notifies the patentee and constitutes an opposition board comprising of officers to whom the notice of opposition and other relevant documents are referred. To contest the opposition, the patentee has to file a reply statement and evidence, if any. If no reply statement is filed, the patent is deemed to be revoked. Upon receiving the patentee’s reply statement, the opponent may file evidence in reply, but it must be restricted to the matters referred to in the patentee’s evidence. The opposition board will thorough examine the documents submitted by the patentee and the opponent and submit a report with reasons on each ground of the notice of opposition along with its recommendation.

Upon receiving the recommendation of the opposition board, the Controller may appoint a hearing to hear both parties. The Controller passes his reasoned order on the opposition based on the hearing and the recommendation of the opposition board. The order of the Controller in a post-grant opposition is appealable in the IPAB under the Act.

Despite the provisions for opposition both before and after the grant of patent, the number of oppositions filed every year remains very low. As per the annual report of the Indian Patent Office, only 153 pre-grant opposition representations and 71 post-grant opposition notices were received in the year 2008-09, out of 40,749 published patent applications and 16,061 granted patents.

The Indian patent system is wellequipped for a third party to challenge the grant of a patent on non patentable, already-known or obvious subject matters through fail-safe mechanisms of pre-grant and post grant oppositions. If used objectively, the system can serve society by allowing free use of technical and scientific knowledge in the public domain for society development.

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