Focus Keyword- Patent opposition

Additional keyword- Section 25, grounds for opposition

INTRODUCTION

Patent guarantees exclusion right or rather monopoly over a product or process. This is granted when someone justifies the exclusive right and complies with the patentability criteria. The opposition system in India under the Indian Patents Acts exists to restrain people from wrongfully obtaining patents and to avoid frivolous or petty innovations. The patent rights granted under the Indian Patents Act are not in pursuance of using the innovation but rather preventing others from using the innovation by somebody else other than the rightful owner of the innovation. 

The patent laws of various countries have a provision dealing with the opposition system. Opposition system is an administrative process available under the patent or trademark act of the respective country which facilitates the mode by which specified people can challenge the application made for obtaining a patent. The Indian Patents Act opposition system discussed under section 25 is nothing but a mechanism to obstruct the method of obtaining patents when they are petty or frivolous. Sec 25 was amended in the view of the Trade-related aspects, Intellectual property rights by the Patents Amendment Act 2005. The amendment introduced an integrated system for pre and post opposition. Earlier, there was no mechanism for post-grant opposition and the only relief was revocation.

PURPOSE

A patent that is obtained by illegal means or wrongly, will affect the rights of the others to use the product or process freely and independently. Hence, such a process will prevent the effecting of rights on a larger scale. The opposition system in India guarantees both quality as well as the validity of products and processes.

PRE-GRANT OPPOSITION

According to sec 25(1), a pre-grant opposition is nothing but an opposition made by any person in writing to the controller when the application for patent is published but not granted. There are several grounds mentioned in the same section on which such an opposition can be made and an application for opposition cannot be made on any other ground apart from the mentioned grounds.

1.      A part or whole of the invention is wrongfully obtained

2.      the claimed invention has been published before the filing date (priority date) in a specification of an application filed in India on or after January 1, 1912, or in any other documents in India or elsewhere, provided that the disclosure does not fall under the grace period exception as contained in Chapter VI

3.       the claimed invention is claimed in a claim of a complete specification published on or after the filing date (priority date) of the applicant’s claim and filed in pursuance of an application for a patent in India before the filing date (priority date) of the applicant’s claim

4.      the claimed invention is publicly known or publicly used in India before the filing date (priority date). Where a claimed invention is a process invention, it shall be deemed to be publicly known or publicly used in India before the filing date (priority date) of the claim if a product made by that process had already been imported in India before that date, except where such importation has been for the purpose of reasonable trial or experiment only

5.      the claimed invention is obvious and clearly does not involve any inventive step, having regard to the published matters referred to in (2) or having regard to what was used in India before the filing date (priority date)

6.       the subject of the claimed invention is neither an invention within the meaning of the Act nor patentable under the Act

7.       the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed

8.      the applicant has failed to disclose the information required by Section 8 of the Act (information regarding corresponding foreign applications) or has furnished false information

9.      where the priority of convention application is claimed, the application was not filed within 12 months from the priority date of the first application

10.  the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention

11.  the claimed invention in the complete specification is anticipated having regard to the knowledge, oral, or otherwise, available within any local or indigenous community in India or elsewhere

After an opposition is made upon the above-mentioned grounds, if the parties wish to be heard, the controller shall hear him and dispose of the representation made within the prescribed period.

POST GRANT OPPOSITION

An opposition can be made by any interested person against the grant of a patent before the expiry of one year from the date of publication.  The grounds for making such an application are mentioned under sec 25(2) which are similar to the grounds mentioned under sec 25(1) i.e the grounds for making a post-grant opposition is similar to the grounds for making a pre-grant opposition. The controller shall inform the patentee. A patentee is a person who has been granted the patent for which he had applied for. After receiving the notice for the opposition, the controller is under the duty to for an opposition board consisting of such officers as he deems fit and provides them with opposition notice and other documents for its examination and recommendations according to the procedure prescribed. The opposition board communicates its recommendations to the controller and upon giving an opportunity to the patentee and the opponent to be heard, the controller may decide to maintain, amend or revoke the patent granted.

If the opposition is made on the ground that the innovation is obtained from the opponent and the controller revoke the patent on the satisfaction of that ground, the controller may amend the patent in the opponent’s name on a request made by him to the controller. When the opposition is made on the ground that a part of the innovation is obtained from the opponent, the controller may amend the patent excluding that part alone upon satisfaction of the above-mentioned ground.

RULES W.R.T OPPOSITION BOARD

The constitution of an opposition board and the procedure that needs to be followed while making opposition post-grant is enumerated under Rule 56 of the Indian Patent Rules, 2003. On receiving the notice of opposition from the opponent, the controller constitutes the opposition board with three members and nominates one of such members as the chairman. The person who examines the opposition application is not eligible and cannot be made as a member of the board. The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them.

The procedure to be followed by the Controller during the hearing is provided in rule 62 of the Rules, read with section 25(4) of the Act. On receipt of the recommendations/report of the Opposition Board and after giving both the parties an opportunity of being heard, the Controller shall, after considering the recommendations of the Opposition Board decide the opposition giving reasons. The Controller may require the members of the Opposition Board to be present in the hearing.

DIFFERENCE BETWEEN PRE AND POST GRANT OPPOSITION

The significant difference between pre and post-grant opposition is that third parties can object to the grant of a patent before the application is made whereas once the application is made, only ‘person interested’ can file for objection. The procedure for post-grant opposition includes the establishment of an opposition board whereas there is no such thing as the opposition board in pre-grant opposition. In post-grant opposition, the patent applicant has the opportunity of being heard and there is a remedy available to the patent applicant against the decision taken by the controller.

SIGNIFICANCE OF THE OPPOSITION BOARD

The importance of the recommendations of the Opposition Board has been duly emphasized by the Supreme Court in Cipla Ltd. vs. Union of India &Ors. In this case, the Supreme Court held that the recommendations of the Opposition Board must be made available to the parties so that they can effectively advance their respective contentions before the Controller at the time of the hearing. The Court held that though the Act and the Rules cast no obligation on the Opposition Board or the Controller to give a copy of the report to either of the parties since the report is crucial in the decision-making process, principles of natural justice must be read into those provisions. Therefore, a copy of the report/recommendation of the Opposition Board should be made available to the parties before the Controller passes the order.

CONCLUSION

The controller is not bound by any law to implement the recommendations of the opposition board. At the same time, the controller is under the obligation to consider the recommendations of the opposition board. The recommendations of the opposition board have an immense persuasive value since it is crafted by experts. Hence, the controller is under an implied obligation to give an explanation in writing, voicing out his view as to why he is not abiding by the recommendations of the opposition board. If it is shown that the Controller disregarded the report without any valid reason, the order passed would be vitiated for violation of the principles of natural justice and maybe set aside on appeal. The provision for mandatorily constituting an Opposition Board during post-grant opposition, for giving expert advice, is based on sound judicial principles.