How to Start a PATENT OPPOSITION

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An Overview of Patent Opposition

A Patent is an integral part of IPR (Intellectual Property Rights); basically, it's an exclusive right given to the original inventor for a unique product or process that gives a distinct way of doing something or reveals a new technical solution to a technical problem. Also, Patent provides a monopoly right to the inventor to sell, copy, or make their invention. Therefore, Patent is vital only awarded to those innovations that validate the exclusive right and obey the patentability criteria. Patent Opposition proceedings are structured to contain illegal obtaining of Patents & claiming of the dizzy or petty invention. Basically, Patent Opposition is a right created under the Patent Act allowing any individual to raise an issue against the grant of a Patent. Patent Oppositions can be made or formed against an accepted Patent application or a certified innovation Patent.

Grounds for Patent Opposition

There are several grounds on which a patent can be opposed:

  1. Eligibility of the Applicant:

    • The individual named in the patent application is not eligible for patent registration for the invention.
    • The applicant is eligible for patent registration, but the invention should be credited to another individual as well.

  2. Patentability of the Invention:

    • The invention or innovation does not meet the criteria for a patentable invention.

  3. Incomplete Patent Specification:

    • The patent specification or description filed is not a complete specification.

Additionally, a patent application can be opposed on the following grounds:

  • Lack of Novelty or Inventiveness: The patent is not new, inventive, or original as required for standard patent registration.
  • Non-Utility: The patent is not useful, meaning it fails to demonstrate a practical application or cannot be used effectively. This ensures that patents are not filed purely for strategic purposes.
  • Prior Use: The invention was publicly used or known before the priority date of the application.
  • Deficient Patent Specification: The patent specification does not meet the required disclosure standards. This includes claims that are unclear, lack conciseness, or fail to be adequately supported by the description, violating the necessary disclosure requirements.

Types of Patent Opposition Proceedings

There are two types of Patent Opposition Proceedings:

1. Pre-Grant Patent Opposition

As per Section 25(1) of the Patent (Amendment) Act, 2005, Pre-Grant Patent Opposition allows any individual, third party, or government entity to challenge a patent application before it is granted. This opposition can be filed after the patent application is published but before the patent is issued. The process serves as a safeguard to ensure the validity of the patent before it is granted. Additionally, Pre-Grant Patent Opposition can be used strategically by opponents to prevent the grant of unjust patents.

Grounds for Pre-Grant Opposition include:

  • Wrongful acquisition of the invention (Section 15(1)(a) of the Patent Act).
  • Anticipation by prior publication (Section 15(1)(b)).
  • Anticipation by prior claiming (Section 15(1)(c)).
  • Public use or knowledge in India before the priority date (Section 15(1)(d)).
  • Obviousness and lack of an inventive step (Section 15(1)(e)).
  • Prohibited subject matter (Section 15(1)(f)).
  • Incomplete disclosure of the invention (Section 15(1)(f)).
  • Failure to comply with Section 8 or provision of materially false information (Section 15(1)(h)).
  • Failure to file the patent application within 12 months of the first application in a convention country (Section 15(1)(i)).
  • False mention or non-disclosure of the biological source or geographical origin (Section 15(1)(j)).
  • Anticipation by traditional knowledge of any community worldwide (Section 15(1)(k)).

2. Post-Grant Patent Opposition

Post-Grant Patent Opposition can be filed by any individual involved in research or development within the relevant technology field. This opposition can be filed within 12 months after the patent is granted. The grounds for Post-Grant Opposition are outlined in Section 25(2) of the Patent Act, 1970. These grounds include wrongful acquisition of the invention, anticipation by prior publications, use of traditional knowledge, non-patentable inventions, incorrect information submitted to the Patent Office, and false disclosures regarding biological sources.

Post-Grant Opposition Process: An Opposition Board is constituted by the Controller, consisting of three members, including a chairman. The examiner who handled the patent application during prosecution is not part of the Board. The Board is given three months to examine the case and provide recommendations on each ground of opposition.

The Controller sets a hearing date and provides 10 days for the parties to review the Board’s recommendations. After considering the hearing and the recommendations, the Controller makes a final decision, which may involve altering, maintaining, or canceling the patent.

The opponent must file a written statement of opposition, including supporting evidence. The statement should outline the case details, evidence, nature of the opposition, and the relief sought. If the patent holder wishes to contest the opposition, they must file a written statement with supporting evidence within 2 months of receiving the opposition notice. If the patent holder fails to respond within this time, the patent is canceled.

Evidence can only be submitted with the Controller’s approval. The Opposition Board evaluates the patent based on the documents submitted by both the opponent and the patent holder and submits its recommendations with reasoning within three months.

Procedural Differences Between Pre-Grant and Post-Grant Patent Opposition

While both Pre-Grant and Post-Grant Patent Opposition proceedings share similar grounds for opposition, there are notable procedural differences between the two, outlined below:

  1. Eligibility to File:

    • Pre-Grant Opposition: Any individual, including a third party or government entity, can file a pre-grant opposition.
    • Post-Grant Opposition: Only individuals or entities with a legitimate interest in the patent or the technology can file a post-grant opposition.

  2. Right to Be Heard:

    • Pre-Grant Opposition: The patent applicant is generally not given an opportunity to be heard in a pre-grant opposition, as the Patent Act does not explicitly provide for it. The right to a hearing depends on the merit of the opposition, and the rules do not clarify if it is held in the presence of the applicant.
    • Post-Grant Opposition: The opponent can proceed with the opposition regardless of the merits of the case, and both parties typically have the right to be heard.

  3. Infringement Proceedings:

    • Pre-Grant Opposition: Infringement proceedings cannot begin at this stage since the patent is still in the application phase.
    • Post-Grant Opposition: Infringement proceedings can be initiated once the patent is granted, as the patent is officially in force.

  4. Cost and Speed:

    • Pre-Grant Opposition: Pre-grant opposition is generally quicker and less costly than post-grant opposition. It allows for a quicker disposal of cases on merit, reducing the cost of contesting the case.
    • Post-Grant Opposition: The post-grant opposition process is more time-consuming and can involve extended hearings, often taking a more traditional approach akin to court proceedings.

  5. Hearing Process:

    • Pre-Grant Opposition: The opponent's right to a hearing is not guaranteed and depends on the merit of the opposition. Additionally, there are no clear rules on how the hearing should be conducted or if it will occur in the presence of the applicant.
    • Post-Grant Opposition: The opponent can proceed with the case and can be heard regardless of the merit of the opposition notice. The rules for conducting the hearing are more clearly defined.

  6. Fees:

    • Pre-Grant Opposition: No specific fee is stipulated for filing a pre-grant opposition.
    • Post-Grant Opposition: Filing a post-grant opposition involves a prescribed fee.

  7. Appeal Mechanism:

    • Pre-Grant Opposition: There is no specific remedy available against the Controller's order in a pre-grant opposition, except by filing a writ petition under the Indian Constitution.
    • Post-Grant Opposition: Redressal can only be sought through the courts, making it a longer process and allowing patent owners of invalid patents to enjoy a monopoly during the judicial proceedings.

  8. Duration of Process:

    • Pre-Grant Opposition: This process is faster as compared to post-grant opposition.
    • Post-Grant Opposition: The process typically follows a slower, more formal approach similar to judicial proceedings.

Overall, while both types of opposition aim to challenge patents, the pre-grant opposition process is generally faster, less expensive, and allows for more immediate results, while the post-grant opposition provides a more formal and thorough procedure for challenging granted patents.

Cases and Decisions Regarding Patent Opposition

  1. Godrej Soaps vs Hindustan Lever Limited
    On October 14, 1992, Godrej Soaps Limited opposed a patent filed by Hindustan Lever Limited in India. The patent had two priority dates from the UK, October 14, 1991, and July 14, 1992, and was granted in India on May 18, 1996. The grounds for opposition included:

    • Non-patentability
    • Prior publication
    • Deficiency and lack of transparency in the description
    • Obviousness and absence of an innovative step
    • Prior public use and knowledge

    Additionally, it was argued that the applicant had failed to disclose the required details under Section 8 or had provided false information. After hearing both parties, it was determined that the opponent had failed to prove the grounds for opposition. The applicant revised the claims and conditions to clarify the points and address the allegations. Following the review of the opposition notice, statement, and evidence from both parties, the opposition was rejected.

  2. Nacto Pharma Ltd. vs Novartis AG
    On July 17, 1998, Novartis AG filed a patent application in India, claiming a priority date from Switzerland of July 18, 1997. Nacto Pharma Ltd. filed an opposition on May 26, 2005. The grounds for opposition included:

    • Anticipation by prior publication
    • False claims
    • Lack of an innovative step
    • Non-patentability under Section 3(d) of the Patent Act

    The opposition argued that the title compound had already been recognized in a US patent filed in 1993, which claimed a pharmaceutically suitable salt of the base compound. This salt was already known to be the most stable form of the compound. Consequently, the product and process claims in the application were considered anticipated by prior publication. Additionally, the application was found to have claimed Swiss priority incorrectly, as Switzerland was not a convention country on the filing date. Therefore, the Swiss application could not be used as a basis for the Indian patent.