Opposition and revocation Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. Opposition and
Revocation

2. ★Opposition: Right to oppose grant of a
patent
★Revocation: Request to revoke a granted
patent

3. Patent Opposition
★Opportunity to public
★Kinds- Pre-grant representation and Post
grant opposition
★Pre grant representation to be filed before
grant
★Post grant opposition to be filed within 1
year from date of grant

4. Pre-grant Representation
★When: From 6 months after publication
to grant
★Considered only after request for
examination is filed
★Who can file? Any person
★How: New Form 7(A) with evidence

5. Grounds
★Wrongful obtainment of right
★Non-entitlement to apply for patent
protection
★Previously published

6. ★Publicly used
★Prior claimed
★Non-obvious or lacks inventive step
★Non-enablement

7. ★Non-patentable subject matter
★Forms part of Traditional knowledge
★Non disclosure or disclosure of wrong
information to patent office

8. ★Source of Bio-material not disclosed or
wrongly disclosed
★Non-adherence to important deadlines
★Contravention of secrecy laws

9. Process
★Publication of application
★6 months later- filing of pre-grant
representation
★Awaiting request for examination to be
filed

10. ★Controller Review
★Inform patent applicant, if relevant
★non extendable deadline to respond

11. ★Hearing, if requested
★Controller’s decision

12. Post Grant Opposition
★When: Strictly within 12 months after
grant
★By whom: Person/Party interested
★How: Notice of Opposition + Evidence
★Grounds: Same as Pre-grant
represenation

13. Process
★Within 12 months after grant
★Controller to immediately inform
patentee
★Patentee to file response

14. ★Opponent to file response to patentees
statement within 1 month
★Controller to appoint opposition board

15. ★Opposition board to give report in 3
months
★Opportunity for hearing
★Controller’s Decision

16. Revocation
★When: Any time after grant
★By whom
○ Person/Party Interested
○ Respondent in a suit for infringement
○ Central Government

17. ○ Controller - on instructions from Central
Government
○ High Court

18. ★Opponent to file response to patentees
statement within 1 month
★Controller to appoint opposition board

19. ★Person/Party Interested:
○ Grounds for revocation - same as opposition
○ Non-working of patent
○ Surrender of patent rights

20. ★Central Government
○ Public interest
○ Non-working of patents
★Controller - on directions from
government
○ patent relating to atomic energy

21. ★High Court:
○ Revocation for Government use
★Respondent:
○ Counter-claim

22. Why oppose or revoke?
★Public participation
★Stringent grant standards
★Avoid grant of frivolous patents
★Alternative to litigation
★Licence negotiation tactic
★Delay tactic

23. Thank you