By – Shailja Jhala (Patent Analyst at Excelon IP)
INTRODUCTION:
A patent has a life. Well, it is simply justified by the ups and downs that it faces during its filling, processing, and working. The life of a patent is 20 years as per the Indian Patents Acts for a process and product patent.
Steps of patent filing in the patent office
- Filing of Patent
- Examination
- Grant
One of the other two that a patent can in its life is, pre-grant and post-grant opposition, as the name suggests the pre-grant is before the grant of the patent while the post-grant is after the grant of patent. Let us see in brief what are the key differences between them:
| Pre Grant | Post Grant | |
| Time period | Within six months of the publication | One year from the date of publication of grant |
| Who can file? | Any person | Person interested |
| Form no: | Form no 7A | Form no 7 |
| Sections | 25(1) | 25(2), |
| Rules | 55 | 55a, 60, 126, 127 |
| Fees | No fee | 2400-12000(e-filing) 2600-13200(physical filing) |
POST GRANT OPPOSITION:
Any person interested can file a post opposition, no here in any person interested includes the person that is involved in similar research or is in the field of same, wherein the person is selling, making, or licensing the similar kind of the inventions. An opposition board is formed by the controller consisting of the members. One of them will be chairman. If the examiner who has dealt with the patent is not eligible, the opposition board is given the time of three months to conduct an examination and submit a recommendation with reasons on each ground of opposition. The controller fixes the date of hearing by giving at least ten days to the parties on receiving the recommendation from the opposition board. After hearing the parties and analyzing the recommendation of the board the controller decides the matter and informs the parties about his decision giving reasons thereof. The controller can order to either maintain or amend or revoke the patent.
The filing can be done within one year from the date of the grant of the patent, the date and time on which the controller grants the patent; which is now an electronic process so it can be viewed at any time and any place and is easily tracked.
The post-grant opposition can be filed on the ground of the sec 25(2)
1. Wrong full obtention
2. Prior publication
3. Prior claiming
4. Publically known or used
5. Lack of inventive step
6. Statutory exclusion
7. Insufficient disclosure
8. Failure to furnish information
9. Convention application not filed within 12 months of the basic application 10.No disclosure or wrong mention
11.Anticipated having regard to the knowledge available
After the application on the following grounds, the notice is notified as soon as possible to the patentee. Soon after that, the scope of statement and evidence if applicable is filed by the opponent to the patentee.
Filing is by form no. 7
1.) For e-filing: 2400 (natural person), 6000 (small entity), and 12000 (others, industry person, start-up)
2.) For the physical filing: 2600 (natural person), 6600 (small entity), 13200 (others, industry person, start-up)
Filing documents
A written statement of opposition and evidence is required to be filed by the opponent in the duplicate copy. The opponent must specify in a written statement:
1. The nature of its interest
2. The facts on which the case is based
3. The relief sought
4. Any evidence
In reply, the patentee has to conquest the grounds of opposition and the evidence if applicable.
If the patentee does not contest the reply and evidence then within two months the patents shall be deemed to be revoked, and the facts are noted in the register of the patent.
After the reply of the patentee, the opponent files further evidence for their contest in reply within one month.
With respect to the further, provisions and opposition if required then the opponent and the patentee can so against the controller on a hearing.
Evidence is filed on the ground of rule 126, and exhibits shall be filed as required under rule 127 according to the Indian Patents Act, 1970
The sections and rules for post-grant opposition:
✔ Sec 25(2), Rule 55a, 60, 126, 127
CONCLUSION: The patent opposition process has principally affected the pharma sectors because the patent applicants are now exposed to multiple post-grant oppositions filed by the competitors, or even by a single competitor. Opposition proceedings are also putting the surfeit of patent prosecution at the Indian patent office. The two-stage patent opposition process has stimulated fears among innovator companies, particularly in the pharmaceutical industry. It would be a challenge for India which is an emerging global economy to meet the commercial as well as legal challenges faced by the patent system of the country and become an attractive commercial destination for the foreign companies without violating any of its international obligations under the TRIPS Agreement. Compared to other invalidation processes, opposition proceedings are simpler and more cost-effective. The Patents Act prescribes both pre-grant and post-grant opposition, offering flexibility to third parties to challenge the validity of a patent following its publication until one year from its grant. The controller’s role is becoming increasingly important for culling frivolous oppositions at the initial stage and preventing misuse of these procedures.