Patent opposition refers to rights conferred to a third-party to oppose the grant of a patent. The patent opposition system in India is governed by section 25 of Indian Patent Act. The purpose of patent opposition is to prevent a patent application from wrongfully getting a grant. Section 25 defines several grounds available to a third-party to oppose a patent grant. However, let us first understand the underlying basics of patent opposition system.
There are 2 stages in which a patent grant can be opposed:
- Stage 1: Before a patent is granted (Pre-grant opposition)
- Stage 2: Upto 1 year after a patent is granted (Post-grant opposition)
Pre-grant patent opposition system
As the name suggests, a pre-grant opposition can be made at any time before the grant of a patent application but after the patent application is published. It is worth noting that section 25(1) allows any person to make a pre-grant opposition. This means there is no restriction on who can oppose a patent application before grant.
Rule 55 associated with section section 25(1) of Patent Act details out the process for making a pre-grant opposition. For an easy reference, below is an illustration to explain the process of pre-grant opposition.
Post-grant patent opposition system
A post-grant opposition can be made only up to 1 year after a patent gets granted. Once this window elapses, the patent cannot be opposed within the purview of this section (its validity could be potentially challenged in Courts though). Unlike pre-grant opposition, the post-grant opposition can only be made by any person interested as per the provisions of this section.
While section 25(2) explains the general grounds of post-grant opposition, section 25(3) – 25(6) describe the process of making a post-grant opposition. This is illustrated in the below.
Grounds for opposition of patent in India
The grounds for making both pre-grant and post-grant opposition in India are more or less common. A convenient way to understand the grounds is to view them as requirements or criteria to obtain a patent (i.e., novelty, obviousness, and few other criteria). If these requirements are not fulfilled, they can be considered as grounds for opposing the grant. Let’s look at the grounds of opposition specified by the Patent Act (For patent agent examination, please remember that while the essence of these grounds is similar for both pre-grant and post-grant opposition, the terminologies need to be appropriately used).
(a) The patent applicant wrongfully obtained the invention from another person;
(b) The claimed invention was already published before the priority date of the claim—
(i) in a patent application made in India on or after the January 1, 1912; or
(ii) in any other document published in India or anywhere else.
Exception – The above provisions are not applicable if the above-described prior publication does not constitute an anticipation of the invention by virtue of sub-section (2) or subsection (3) of section 29 (deals with publication without consent of the true and first inventor);
(c) The claimed invention was already claimed in a complete specification published on or after the priority date of the claimed invention but the complete specification claims priority to a priority date earlier than that of the applicant’s claim;
(d) The claimed invention was publicly known or publicly used in India before the priority date of the claimed invention.
For this clause, an invention related to a process for which a patent is claimed is considered to be publicly known or publicly used in India before the priority date of the claim, if a product made by that process had already been imported into India before that date, except if such importation has been for the purpose of reasonable trial or experiment only (refer section 29(2) for this exception);
(e) The claimed invention is obvious and clearly does not involve any inventive step, based on the matter published according to clause (b) or based on what was used in India before the priority date of the claimed invention;
(f) The subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
(g) The complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
(h) The applicant did not disclose the information required by section 8 to the Controller, or has furnished incorrect information (i.e., details of foreign counterpart applications);
(i) The applicant failed to file a convention application within 12 months from the date of the first application made in a convention country under Paris Convention;
(j) The complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(k) The claimed invention is anticipated based on knowledge, oral or otherwise, available within any local or indigenous community in India or any other country.
Fee for making a pre-grant and post-grant opposition
The pre-grant opposition does not incur any official fee. For post-grant opposition, the official fee is Rs. 2,400 or Rs. 12,000 depending on whether the opponent is a natural person/small entity or a large organisation. This fee is supplemented by the agent’s or attorney’s professional fee.
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