What is a patent?
The patent refers to the exclusive right which is granted to an inventor for inventing a new product or process, which offers a new method of doing something or provides a technical solution to a problem. The owner of the patent acquires monopoly rights and can prevent others from commercially exploiting the invention without his consent. These rights are granted in exchange for a full disclosure of the technical ‘know how’ of the invention, so that others may learn from it and there is the encouragement of creativity and innovation in the society.
What is patent opposition?
Due to the monopoly nature of a patent, it is important to ensure that it is awarded only to those innovations which fulfil the criteria for a valid patent. There may be certain cases where the person applying for a patent (the applicant) has wrongfully obtained another person’s invention, or the invention is obvious or is already publicly used in the territory. In such circumstances, there must be a system in place which allows third parties to oppose the grant of an invention. The same is known as “opposition proceedings”. The Indian Patent Act, of 1970 provides a mechanism that allows the public to raise objections against the grant of a patent by filing an opposition with the Patent office. There are 2 types of opposition proceedings in place depending on the stage of grant of the patent:
- Pre-grant opposition: Where the opponent can challenge a pending application prior to the grant of a patent.
- Post-grant opposition: Where the opponent challenges the validity of a patent that has already been granted. Before 2005 India had only pre-grant opposition so once a patent was granted no one could oppose it. However, In keeping with the TRIPS agreement India introduced grounds for post-grant opposition was introduced under Section 25 of the Act.
Pre Grant Opposition
Section 25(1) of the Indian Patent Act, 1970 along with Rule 55 of Patents Rules, 2003 lays down the law relating to pre-grant opposition in India. The opposition can be filed by any person in writing, any time within 6 months from the date of publication of the patent application and before it is granted. It is necessary to obtain the complete specification from the official website as the opposition cannot be made solely based on the abstract. The purpose of this mechanism is to act as a defensive shield that verifies the validity of the application before the actual grant of patent rights.
Grounds for pre-grant opposition
Section 25(1) clauses (a) to (k) of the Patent Act lays down an exhaustive list of the grounds based on which the patent application can be opposed. These grounds are:
- Wrongful obtainment: The invention or any part thereof was wrongfully obtained from the opponent.
- Prior publication: The invention was published before the priority date (earliest filing date which discloses the invention). This objection is subject to Section 29 of the Act, which talks about situations where the publication does not constitute an anticipation of the product or process.
- Prior claim: The invention was previously claimed in another Indian patent application, which was published on or after the priority date of the applicant’s claim but whose priority date is earlier than that of the applicant.
- Prior knowledge or use: The invention is known or used by the public before the priority date. In the case of a process that is being patented, it is deemed to have been publicly known or used if a product made by that process was imported in India, before the first date of filing of the application.
- Obviousness: The invention is obvious and does not involve any inventive step. This means that no advancements have been to the existing use or literature on the subject.
- Non-patentable subject matter: The subject of the application is not considered to be an invention under the Patent Act or falls in the category of “non-patentable inventions”.
- Insufficient description: The patent specification does not properly explain the invention or the method of performing it.
- Non-disclosure: The applicant has failed to disclose all the details which were required under Section 8 of the Act.
- False disclosure: The applicant has provided materially false information.
- Time limit: The conventional application was not filed within the specified period of 12 months from the date of the first patent application made in a conventional country.
- Biological material: The specification failed to disclose the origin or source of the biological material, if any, used in making the invention or has mentioned the incorrect source.
- Traditional knowledge: The invention was anticipated by taking into consideration the knowledge possessed by indigenous communities anywhere in the world.
Procedure for filing pre-grant opposition
The procedure for filing the opposition is given in Rule 55 of the Patent Rules. The rule states that all representations for opposition must be made under Form 7A of the Act to the Controller General of Patents. The Indian legislature has intentionally made a provision that prohibits the grant of patents until a period of 6 months from the date of publication has gone by. If the examiner believes that the arguments put forth in the statement of opposition are without merit, he will reject the opposition by passing a speaking order. On the other hand, if the statement is found to have merit, the Examiner shall send a notice to the applicant. The applicant is then required to submit his statement and evidence, if any, within a 3-month time frame from the date of the notice. The Controller considers the statements and issues a speaking order, which may:
- Grant the patent,
- Refuse the patent, and
- Require the amendment of the patent specification or other documents after which the patent can be granted.
Post Grant opposition
This post-grant opposition may be filed only by a person interested within 12 months from the date of grant of patent in the Indian Patent Journal. By the ‘notice of opposition,’ a post-grant opposition is filed. The notice has to be filed with the Controller of the appropriate patent office. Section 2 (1) (t) defines interested person.
Grounds for post-grant opposition
Under the Act, there is no difference in the grounds on which pre-grant and post-grant oppositions can be made. Section 25(2) specifies the same grounds which were listed in subsection 1 of the provision.
Procedure for post-grant opposition
Rules 55A to 70 of Patent Rules, 2003 lay down the procedure for a post-grant opposition. The notice of opposition under Section 25(2) has to be filed with the Controller of the appropriate office under Form 7.
Formation of Opposition Board
The Controller of Patent will order the Opposition Board the examination the Opposition filed by the opponent. The Opposition Board consists of a total of 3 members. Out of the 3 members of the Opposition Board, one member is nominated by the Controller of Patent to chair the Opposition Board. Generally, the members of the Opposition Board are Patent examiners, except for that Patent examiner who has dealt with the same Patent application against which opposition is filed.
Document Filing & Hearing
The opponent is required to file a copy of the written statement of the Opposition and the supporting evidence of the Opposition. The Applicant, if he/she wishes to contest, should submit a written statement with supporting evidence, if any, within 2 months from the date of receipt of notice of Opposition of Patent to the Patent Office. The Applicant is also required to submit a copy of the written statement to the Opponent of Patent.
If the Applicant does not contest this within 2 months, the patent will be deemed to be revoked if the Applicant does not contest within 2 months of receipt of the Opposition notice. After receiving the reply of the Applicant, the opponent is required to file the reply evidence to the Patent Office within 1 month from the date of receipt of the reply of the Applicant. Any further evidence can only be filed with the leave of the controller of the Patent. The Opposition Board will examine the documents submitted by the opponent and the reply of the Applicant. The opposition Board after examination will give recommendations to the Controller of the Patent with proper reasoning to every single ground mentioned in the Opposition notice filed by the opponent. The recommendations should be given by the Opposition Board within 3 months from the date on which documents were forwarded to the Opposition Board.
After the recommendations of the Opposition Board are received, the Controller of Patent should fix a date and time for hearing both the parties. The members of the Opposition Board are required to be present at the time of the hearing. The Controller of Patent, after hearing both the parties, or without a hearing if neither of the party wishes to be heard, and considering the recommendations of the Opposition Board, the Controller can give an order that the Patent be either maintained, amended or revoked.
Notable Case Laws Associated with Patent Opposition
Novartis AG vs. Natco Pharma Ltd: Novartis Ag Switzerland filed a patent application in India in 1998 claiming the priority date of Switzerland in 1997. Upon publication, the grant of the patent was opposed by Natco Pharma Ltd., India on 26th May 2005 and the grounds cited were anticipation by prior publication, not patentable under S 3(d) lacking inventive step and claiming wrong priority date.
The title compound was already patented in the US and an application “Nature Medicine” (5th May 1996) also described the title compound. Also, the claimed salt inherently existed in the most stable form of salt. The claims of application for the process and product in respect of the title compound stood anticipated by prior publications.
According to 3(d), it was a new form of the known substance. The company claimed Switzerland’s priority date. However Switzerland was not a convention country on the date the application was filed. Hence, no priority for the Swiss application could be claimed in respect of the Indian application.
Given the above findings and arguments, the Controller ruled that the above patent application cannot proceed for grant of patent.
Neon Laboratories Pvt Ltd. & Anr vs. Troika Pharma & Ors: This was a writ petition filed in Bombay High Court by Neon Labs against the Patent Controller for granting a patent to Troika Pharma per Rule 55(6) of the Patent Rules, 2003 in a pre-grant opposition. The Court interpreted Section 25(1) and held when a pre-grant opponent requested a hearing it was the duty of the Controller to grant the hearing to the pre-grant opponent.
Ajay Industrial Corp. v. Shiro Kanao of Ibaraki City: The Delhi High Court held that only a person interested can revoke a patent or file a post-grant opposition application. A person interested within the meaning of Section 64 must be a person who has a direct, present and tangible commercial interest or public interest which is injured or affected by the continuance of the patent on the register.”
Author: Dipanwita Chakraborty, Legal Intern at PA Legal.
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