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Patent opposition procedure


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Patent opposition procedure

  1. 1. SUCHITRA BAI Patent Department Altacit Global, Chennai Office
  2. 2. <ul><li>Opposition to the grant of Patent signifies the first instance at which a challenge can be made to the grant of a patent. </li></ul><ul><li>Opportunity for the competitor to oppose unjustified protective rights. </li></ul>
  3. 3. <ul><li>Pre-Grant </li></ul><ul><li>Opposition made before the Grant of Patent </li></ul><ul><li>Post-Grant </li></ul><ul><li>Opposition made after the Grant of Patent </li></ul>
  4. 4. <ul><li>Patent Office </li></ul><ul><li>Intellectual Property Appellate Board [IPAB] </li></ul><ul><li>High Court [Concerned Jurisdiction] </li></ul>
  5. 5. <ul><li>Opposition to a Pre-grant Patent should be made after the publication of the Specification in the Patent office journal and before the Grant of Patent </li></ul><ul><li>Opposition to a Post-grant Patent should be made within twelve months from the date of publication of the Grant of Patent in the Patent office journal </li></ul><ul><li>Opposition to a Post-grant Patent after expiry of twelve months should be made before the IPAB. </li></ul>
  6. 6. DESCRIPTION PRE-GRANT OPPOSITION POST-GRANT OPPOSITION Initiation of proceedings Written Representation in no particular form Notice of Opposition in Form 7 Infringement proceedings Cannot be instituted during pre-grant opposition as the Patent is still in the application stage Can be instituted as the post-grant proceedings happen after the grant of the Patent Who can be an opponent Any person may be an opponent Any person interested as defined in Sec.2 (1) (t) may be an opponent Status of Opponent Not a party to the proceeding Party to the proceeding Deciding Authority Controller Controller on the recommendation of the Opposition Board Time for preferring opposition Any time before the grant of Patent, preferably within six months as stated in R.55 (1A) Within one year after the grant of Patent
  7. 7. Description Pre-grant Opposition Post-grant Opposition Hearing No procedure for Hearing Procedure as detailed in R. 62 Relief Rejection of Application Revocation of Patent Appeal Opponent has not right to appeal under the Act Opponent may prefer an appeal to the Appellate Board Procedure Not clearly detailed in the Act or the Rules Comparatively detailed provision on procedure Fee No Fee Rs.1500/- for Individuals and Rs.6,000/- for Legal Entity Costs No provision for costs Cost can be awarded under R.63
  8. 8. <ul><li>Representation in writing </li></ul><ul><li>No fee payable </li></ul><ul><li>Written Statement [Detailing the grounds of Opposition] </li></ul><ul><li>Evidence in Support of the Opposition </li></ul>
  9. 9. <ul><li>Form 7 </li></ul><ul><li>Payment of Prescribed Fees </li></ul><ul><li>Written Statement [Detailing the grounds of Opposition] </li></ul><ul><li>Evidence in Support of the Opposition </li></ul>
  10. 11. <ul><li>Wrongful Obtaining </li></ul><ul><li>International Carbon Corpn’s Application (1975) </li></ul><ul><li>‘ Obtaining the invention’ means finding out the nature of the invention which is purported to be patented. </li></ul><ul><li>Prior publication in any Indian specification or prior publication in any other document in India or elsewhere . </li></ul><ul><li>‘ Publication’ means ‘publicly known’. The publication must be such that the persons to whom the information is communicated must be free . </li></ul><ul><li>Monsanto Brignac’s Application , ( [1971] RPC 153) , it was held that a company had published a document by supplying it to its salesmen, since it had been given to them with no restriction on disclosure; indeed it had been put into their hands with the intention that they should make the information available to the public. </li></ul>
  11. 12. <ul><li>Obviousness and lack of Inventive step </li></ul><ul><li>In the case of Jay Engineering WorksLimited (Patentee) v. Polar Industries Limited (Petitioner) [PTC(Suppl)(2)310(Cal) ], the ground was that the Patented invention [Patent being No. 155307 dated 20th February, 1981 granted by the Controller of Patents and Designs] is only a workshop improvement of something known i.e., Split type lower socket for use in ceiling fan motors, connecting down rod and shaft and does not involve any inventive step involved and also was known before priority date of a claim , hence not patentable. The patent was revoked. </li></ul><ul><li>Invention not patentable under the Act </li></ul><ul><li>The Patents Act specifically laid down Inventions which are not patentable. </li></ul><ul><li>In the case of Convention Application, not made within the prescribed time </li></ul><ul><li>A Conventional application is required to be filed within 12 months from the date of first application for protection for the invention made in a convention country. Failure to comply with this requirement is a ground for refusing the application. </li></ul>
  12. 13. <ul><li>Prior Claim in a concurrent application . </li></ul><ul><li>In the matter of Graf & CIE AG and Maschinenfabrik Rieter Ag v . Nitto Shoji Limited during pre-grant opposition proceedings of Application No. 422/Cal/2000), the Controller held, “.. a prior art drawing may be taken into consideration as a prior art disclosure if it discloses the essential features of the impugned claim in a sufficiently and clearly understandable manner to a skilled person and also if the drawing is such that it provides an enabling disclosure either explicitly or implicitly” </li></ul><ul><li>Prior public use or public knowledge in India </li></ul><ul><li>In Lallubhai Chakubhai v. Chimanlal Chunilal & Co. A.I.R., 1936 Bom. 99, it was held that public user did not mean a user by the public but a user in a public manner. It was further held that the use of an invention for purposes of trade, whether by the inventor himself or by others, would constitute public user of the invention. It was also held that public sale of articles is strong evidence that the user is commercial and not experimental. But to constitute evidence of public user, the sale must be open and in the ordinary way of business. </li></ul>
  13. 14. <ul><li>Lack of disclosure or wrongly mentions the source or geographical origin of biological material </li></ul><ul><li>An invention may be opposed on the ground that the Complete Specification does not disclose or wrongly mentions the source or geographical origin or biological material used for the invention. </li></ul><ul><li>Anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community . </li></ul><ul><li>Traditional Knowledge, being knowledge already existing, is not patentable. </li></ul><ul><li>An example is the anti septic property of turmeric for wound healing. </li></ul>
  14. 15. <ul><li>Insufficient description of the Invention </li></ul><ul><li>The quid pro quo for the grant of patent monopoly is the disclosure of the invention. </li></ul><ul><li>In the matter of Jagadish Mohanlal Joshi V. Ghodavat Pan Masala Products P. Ltd, insufficiency of description was a ground of opposition citing “if the applicant did not give prior art details in the specification it would mislead the Controller and the public, mouth refreshing preparations with tobacco and without tobacco are known in the art, and the applicant is not entitled for a patent unless he shows that his process is an improvement over the earlier process. </li></ul><ul><li>Failure to disclose information relating to foreign applications under Section 8. </li></ul><ul><li>An applicant prosecuting an application for a patent in any country outside India in respect of the same or substantially the same invention shall disclose the same to the Controller and give an undertaking to keep him informed about subsequent filings of such Application </li></ul>
  15. 16. <ul><li>THANK YOU </li></ul>