Post-grant opposition

Section 2(1)(t), 25(2).

Patent Rule  55A, 60, 126, 127.

Form 7.

1. Any person interested can file a Notice of Opposition against the grant of Patent in the prescribed format, in duplicate, within twelve months from the date of publication of grant of patent at the appropriate Office.

2. The date of grant of patent is the date on which the Controller grants a patent and since the granting of patent is now only done through electronic module, the date and time of grant is available to the public on a real time basis through the official website. Consequently, any opposition filed after the date of grant will be treated as a post grant opposition.

3. The opponent shall state the nature of his interest in the matter.

4. Person interested includes a person engaged in, or in promoting research in the same field as that to which the invention relates. It may be an organization that has a manufacturing or trading interest in the goods connected with the patented article or which has a financial interest in manufacturing such goods or which possesses Patents relating to the same subject.

5. The post-grant opposition can be filed on the grounds as mentioned in Section 25(2), but no other grounds.

6. After receipt of Notice of Opposition, the Controller shall notify the patentee about the fact of receipt of such notice, without any delay.

7. A copy of the statement and evidence, if any, shall be delivered to the patentee by the opponent.

8. If the patentee desires to contest the opposition, he shall file a reply statement setting out fully the grounds upon which the opposition is contested, and evidence if any, in support of his case within a period of two months from the date of receipt of the copy of opponent‘s written statement and evidence, if any, and deliver a copy to the opponent.

9. If the patentee does not desire to contest or does not file his reply and evidence within two months, the patent shall be deemed to have been revoked and the Controller shall issue the order of revocation of Patent and the fact of revocation is entered in the register of patents.

10. After receipt of reply from the patentee, the opponent may file his evidence in reply within one month from the date of delivery to him of a copy of the patentee‘s reply statement and evidence. Evidence in reply of the opponent shall be strictly confined to the matters in the patentee‘s evidence. The opponent shall deliver a copy of his reply statement and evidence to the patentee.

11.No further evidence shall be delivered by either party, except with the leave or direction of Controller.

12. With respect to further evidence filing, either party shall do so before the Controller‘s notification on the fixation of the date of hearing.

13. Where a specification or other document in a language other than English is referred to in the notice, statement or evidence, an attested translation thereof in duplicate in English should be furnished along with such notice, statement or evidence, as the case may be.

14. Evidence shall be filed on affidavits as required under Rule 126.

15. Exhibits shall be filed as required under Rule 127.

Many of the grounds given below are similar to the grounds required for filing pre-grant opposition.

1. Wrongfully obtaining
2. Prior publication / prior claiming
3. Prior claiming in India
4. Prior public knowledge or public use in India
5. Obviousness and lack of inventive step
6. Not an invention or the invention not patentable
7. Insufficient description of the invention
8. Failure to disclose information or furnishing false information relating to foreign filing
9. Convention application not filed within the prescribed time
10. Incorrect mention of source/geographical origin of biological material
11. Invention anticipated with regard to traditional knowledge of any community anywhere in the world

Constitution of Opposition Board [ Rule 56, 57,58, 59, 60 ]

1. After receipt of Notice of Opposition, an Opposition Board is constituted by the Controller, by order, to examine such notice including all the documents filed under rule 57-60 in connection with opposition by the opponent as well as patentee.

2. The Board shall submit the report with reasons on each ground taken in the Notice of Opposition after examining all statements, documents and evidence submitted by the parties, as a joint recommendation within three months from the date on which all such documents were forwarded to them.

3. The Opposition Board consists of three members with one of them as Chairman.

4. The examiner may be a member of the Board. But, the examiner who has dealt with the application for patent during the prosecution proceedings for grant of patent thereon shall not be included as a member of the Board.

5. If further evidence is taken on record by the Controller, by an order in writing, the same shall be forwarded to the Opposition Board for their consideration. This shall also apply when such further evidence is taken on record after the receipt of report from Opposition Board.

Hearing [ Rule 62 ]

1. After receiving the recommendation of Opposition Board the Controller shall fix without undue delay, a date and time for the hearing of the opposition and inform the parties, at least ten days in advance.

2. On receipt of the notice of hearing, if either party desires to be heard, he shall inform the Controller by a notice along with the prescribed fee.

3. The Controller may require the members of Opposition Board to be present in the hearing

4. The Controller may refuse to hear any party which has not given such notice and fee.

5. If either party intends to rely on any Publication at the hearing not already mentioned in the notice of opposition, statement or evidence, he shall give to the other party and to the Controller a notice of his intention to do so, together with details of such publication. Such notice shall be given at least five days before the date of hearing.

6. After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Opposition Board, the Controller shall decide the opposition, i.e., he may revoke the

patent, or order amendments in the Patent or refuse the opposition and issue a speaking order.

7. If amendment of specification or any other document is ordered by the Controller, the patentee shall submit such amended documents to the office within a reasonable time, as directed by the Controller.

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Posted in: INDIAN PATENT SYSYTEM