PATENT OPPOSITION

Introduction

Any person can file an opposition to a patent application before or after the patent has been granted. The opposition should be in writing and addressed to the Controller of Patents. 

The Controller then may send a notice to the applicant to request amendments, to such notice the applicant has three months to respond. The applicant may provide statements to counter the opposition including evidence, if any.

Types Of Patent Oppositions

There exist two kinds of Patent Oppositions: Pre-Grant Opposition and Post-Grant Opposition.

PRE-GRANT OPPOSITION-Opposition filed after the patent application has been published but before the grant of the patent. Such an application should be in writing as prescribed by the Patents Act, 1970.

The pre-grant opposition can be done on any of the following grounds as given under Section 25(1) of the Patents Act, 1970, including-

• Invention wrongfully obtained: For an instance, a researcher develops a new drug but fails to file a patent. His colleague who knows about the research files a patent application for the same drug in their name without proper consent.

• Publication of the product or invention details before granting the patent or priority date, in India or on any international platform: For an instance, an inventor presents their innovative solar panel technology at an international conference before filing a patent application. This public disclosure invalidates patentability if a patent application is filed more than 12 months later than such disclosure.

• The claim or the product is known to the public or has been used by the public before the priority date: For example, a company files a patent for a type of smartphone case design. However, similar cases/ covers have already been sold publicly in a local market six months before the patent filing

• Obviousness and Lack of Novelty: For example, an applicant tries to patent a pencil with an eraser attached at the back, a concept already widely used and obvious to people skilled in the art.

• The product is simply not considered as an invention under the Patents Act: For example, an application is filed to patent a mathematical formula used to calculate interest rates. Since mathematical formulas are not patentable under Indian law, the application will be rejected.

• The invention does not satisfy the patent definition or description: For example, a person claims to have invented a perpetual motion machine that violates the laws of thermodynamics. Such an invention cannot be patented because it is not practically achievable.

• Insufficient product description: For an instance, an inventor files a patent for a new type of battery but fails to provide enough details about its chemical composition or working mechanism which makes it impossible to replicate or understand.

• Failure to disclose all the details associated with the product: For example, a pharmaceutical company files a patent for a drug but deliberately omits information about one of the key ingredients used in its formulation.

• False disclosure or incorrect statements are being made regarding the product: For example, a company claims in its patent application that its new cleaning product is biodegradable and non-toxic but later investigations reveal these claims to be false.

• Convention Application not filed within the prescribed time of 12 months from the time the 1st patent was filed in a conventional country: For example, an inventor files a patent application in the USA on January 1, 2023. However, they missed the deadline for filing the corresponding application in India, which should have been filed by December 31, 2023.

• Wrongful mention of the source or geographical origin etc.: For example, a company patents a turmeric-based wound-healing cream but incorrectly attributes the source of the turmeric to their lab by omitting its traditional origin from Indian households.

POST-GRANT OPPOSITION- the Post-Grant Opposition is to be filed within 1 year from the date of publication of grant of a patent. The grounds for post-grant opposition will be the same as pre-grant opposition provided under Section 25(2) of the Patents Act, 1970.

While applying for such opposition, if the Controller does not find enough reason for such opposition, he shall refuse the opposition application after issuing a notice giving the opponent a chance to hear along with the evidence.

The opponent shall also send a letter along with the application to the Controller stating the nature and details of such opposition and its relief along with the evidence. Hence, it is considered to be an easy and speedy method of grievance redressed.