Pre- and Post-Grant Oppositions in India – Part 3 of an 8 Part Series

This is Part 3 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here. To see Part 2, Third Party Submissions in Russia, click here.

Pre-Grant Oppositions

Any third party (Opponent) may file a pre-grant opposition during the pendency of a patent application. Such an opposition may be filed at any time after publication of the application but prior to grant provided that a request for examination has been filed. The grounds available for a pre-grant opposition are provided in Section 25(1) of the Indian Patents Act, 1970 (Act) and Rule 55 of the Indian Patent Rules, 2003 (Rules) and include:

  • Applicant wrongfully obtained the whole or any part of the invention (Section 25(1)(a)).
  • Prior publication (Section 25(1)(b)).
  • Prior claiming (namely, double patenting, Section 25(1)(c)).
  • The invention was publicly known or publicly used in India. Under this ground, an invention claiming a process is deemed to have been publicly known or publicly used in India if, before the priority date, a product made by the process has been imported into India (except if such importation was for the purpose of a reasonable trial or experiment) (Section 25(1)(d)).
  • The invention is obvious/lacks inventive step (Section 25(1)(e)).
  • The subject matter claimed does not constitute an invention or is directed to non-patentable subject matter (Section 25(1)(f)).
  • The specification does not sufficiently and clearly describe the invention or a method by which it is to be performed (Section 25(1)(g)).
  • Failure to disclose information to the Controller as required by Section 8 or some or all of the information furnished by the Applicant as required by Section 8 was known by the Applicant to be false (Section 25(1)(h)).
  • With respect to a convention application, failure to file the application within twelve months from the date of the first application in a convention country by the Applicant or a person from whom the Applicant derives title (Section 25(1)(i)).
  • The specification does not disclose or wrongly mentions the source or geographical origin of biological material used in the invention (Section 25(1)(j)).
  • The invention claims traditional knowledge (Section 25(1)(k)).

The initial step of a pre-grant opposition proceeding involves an Opponent submitting a “written representation” to the Indian Patent Office (IPO). The written representation must provide a written statement setting forth the grounds for the opposition and evidence in support thereof. At the same time, the Opponent can request an oral hearing.

Next, the Controller considers the written representation submitted by the Opponent. If the Controller believes that the pre-grant opposition lacks merit, the Opponent (but not the Applicant) is given an opportunity for a hearing (if requested at the time the written representation was filed). After the hearing, if the Controller is still of the opinion that the opposition should be refused, a speaking order (namely, an order in which the Controller provides his reason or explanation for why the order was passed) is issued rejecting the pre-grant opposition (which typically occurs within one month).

If the Controller is of the opinion that the pre-grant opposition has merit (meaning that the application should be refused or that the claims require amendment), the Applicant is notified and provided with a copy of the written representation. Additionally, the Applicant is given a period of three months from the date of the notice to file statement and evidence in response. The Controller considers the submissions made by the Opponent and Applicant and decides whether to refuse or grant the patent. Specifically, a written decision is provided within one month from the date of completion of the pre-grant opposition proceeding. Unfortunately, this decision cannot be appealed. Nonetheless, the losing party may invoke the writ jurisdiction of the High Court or file a post-grant opposition or revocation as a remedy at a later date.

Neither the presence of the Opponent nor Applicant is required during a pre-grant opposition proceeding. In fact, legal representatives for both can submit the written representation, statement and evidence on behalf of each party and may also participate in the opposition proceedings. Additionally, pre-grant oppositions are less intense and require less involvement by the Opponent and Applicant as compared to the more trial-like procedure adopted in post-grant oppositions (discussed below).

Post-Grant Oppositions

A post-grant opposition can be filed by any interested person by serving a Notice of Opposition (Notice) on the Controller. According to the Act, any “person” refers to “any person engaged in, or in promoting, research in the same field as that to which the invention relates”. The time period for filing a post-grant opposition is twelve months from the date of publication of grant of a patent. The grounds available for a post-grant opposition are provided in Section 25(2) of the Act and include:

  • Patentee wrongfully obtained the whole or any part of the invention (Section 25(2)(a)).
  • Prior publication (Section 25(2)(b)).
  • Prior claiming (namely, double patenting, Section 25(2)(c)).
  • The invention was publicly known or publicly used in India. Under this ground, an invention claiming a process is deemed to have been publicly known or publicly used in India if, before the priority date, a product made by the process has been imported into India (except if such importation was for the purpose of a reasonable trial or experiment) (Section 25(2)(d)).
  • The invention is obvious/lacks inventive step (Section 25(2)(e)).
  • The subject matter claimed does not constitute an invention or is directed to non-patentable subject matter (Section 25(2)(f)).
  • The specification does not sufficiently and clearly describe the invention or a method by which it is to be performed (Section 25(2)(g)).
  • Failure to disclose information to the Controller as required by Section 8 or some or all of the information furnished by the Applicant as required by Section 8 was known by the Applicant to be false (Section 25(2)(h)).
  • With respect to a convention application, failure to file the application within twelve months from the date of the first application in a convention country by the Applicant or a person from whom the Applicant derives title (Section 25(2)(i)).
  • The specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention (Section 25(2)(j)).
  • The claimed invention was anticipated by knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere (Section 25(2)(k)).

In addition to filing the Notice in the IPO, the Opponent is required to serve a copy of the Notice and evidence on the Patentee. Upon receipt of a Notice, the Controller is required under Rule 56 of the Rules to set up an Opposition Board (Board). The Board consists of three members, one of whom is required to be an Examiner (however, the Examiner cannot be the Examiner that examined the application). If the Patentee decides not to contest the opposition, the patent is per se revoked.

If the Patentee contests the opposition, within two months from the date of receipt of a copy of the Notice from the Opponent, Patentee is required to file a reply statement. The reply statement must set out the grounds upon which the opposition is contested as well as provide any evidence in support thereof. The Patentee must serve a copy of its reply statement and any supporting evidence on the Opponent.

Within one month from the date of receipt of the Patentee’s reply statement (and any supporting evidence), the Opponent may file further evidence in response to the evidence submitted by the Patentee in connection with its reply statement. In a post-grant proceeding, evidence may be submitted in the form of affidavits or exhibits. Additionally, prior art patents and publications are generally submitted as evidence.  The Opponent must serve a copy of any such further evidence submitted to the Patentee. Once the Opponent files any such further evidence, no further evidence can be submitted by either party without prior approval from the Controller. If such approval is received, any such further evidence must be submitted before receipt of notification by the Controller of the date of oral hearing.

Within three months from the date on which all documents (written statements, replies and evidence) are forwarded to the Board, the Board reviews and considers the submissions made by both parties, including the grounds of opposition, the Patentee’s reply statement as well as all the evidence submitted, and submits a joint recommendation report to the Controller with respect to each ground of opposition. A notice is issued providing not less than ten days for the parties to present their oral arguments. Once oral arguments are completed, a written decision is ordinarily provided within one month, although a specific time period is not prescribed in the Act. Further, an aggrieved party may appeal the Controller’s decision at the Intellectual Property Appellate Board (IPAB) under Section 117 (A) of the Act. 

This post was written by Lisa Mueller and Nidhi Anand ‎of Chadha & Chadha.

 

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