Introduction
We’ve already covered the filing stage and the prosecution stage of the patent process in our blog. But here’s the thing- even if your patent has been accepted at the FER stage or the hearing stage, the process is still not entirely complete.
Pre-Grant Opposition – Form 7A
Anytime between the initial publication of the patent (which occurs before the First Examination Request has been issued) and anytime before the publication of the grant, any person can file a pre-grant opposition against the patent. The grounds for this opposition are given in Section 25 (1) of the Patents Act 1970. These grounds include wrongful obtainment of the patent, lack of novelty, lack of inventive step, insufficient disclosure, or wrongful subject matter.
Most of these objections will also be addressed during the request for examination period. Therefore, while the opposition can be filed pre-RFE, it will not be considered until the request for examination has been filed by the applicant.
Patent Grant
If the patent office decides that your application meets the required criteria, a letter of patent is issued to the applicant. Additionally, the particulars of the granted patent will be published in the Patent Journal. This is the same Journal where pre-grant publication takes place. However, while the pre-grant publication includes the abstract and an image along with the particulars of the patent, the grant publication only records the particulars. A person can check the detailed patent documents associated with the granted patent by searching for the application number in the Patent public search website.
Post-Grant Opposition – Form 7
Once the patent is published in the official journal, any interested person can file a post-grant opposition within 12 months of the grant publication date. The grounds for opposition are very similar to the grounds fort a pre-grant opposition, with some additional stipulations mentioning insufficient disclosure to the controller regarding the particulars of similar patents outside India.
Post-Grant Renewal Fees
After the patent has been granted, the patentee must pay annual renewal fees to maintain the rights granted by the patent. There are no patent fees for the first two years (calculated from the date of application of the patent), but years 3-20 of the patent rights require fees to be paid. The fees are different for different types of entities- however, the fees for the later years are higher than the fees for the earlier years.
The patentee can pay these fees annually, or they can choose to pay it in a lump sum. It may generally be preferable to do the former, unless the patentee feels that the patent will have only limited use or will be obsolete before the expiry of the patent term.
If the patentee accidentally misses out paying these annual maintenance fees, they have a few options for the restoration and renewal of their patent, which have been discussed in detail here.
Conclusion
The process from patent application to grant and beyond is very long and can sometimes be complex. However, there is very little chance of things going wrong so long as the applicant and the agent keep all the relevant deadlines and requirements in mind.
Author: Varsha Valsaraj, Associate at PA Legal.
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