Opposition and Revocation

★Opposition: Right to oppose grant of a patent

★Revocation: Request to revoke a granted patent

Patent Opposition

★Opportunity to public★Kinds- Pre-grant representation and

Post grant opposition★Pre grant representation to be filed

before grant★Post grant opposition to be filed

within 1 year from date of grant

Pre-grant Representation

★When: From 6 months after publication to grant

★Considered only after request for examination is filed

★Who can file? Any person★How: New Form 7(A) with evidence

Grounds

★Wrongful obtainment of right★Non-entitlement to apply for patent

protection★Previously published

★Publicly used★Prior claimed★Non-obvious or lacks inventive step★Non-enablement

★Non-patentable subject matter★Forms part of Traditional knowledge★Non disclosure or disclosure of

wrong information to patent office

★Source of Bio-material not disclosed or wrongly disclosed

★Non-adherence to important deadlines

★Contravention of secrecy laws

Process

★Publication of application★6 months later- filing of pre-grant

representation★Awaiting request for examination to

be filed

★Controller Review★Inform patent applicant, if relevant ★non extendable deadline to respond

★Hearing, if requested★Controller’s decision

Post Grant Opposition

★When: Strictly within 12 months after grant

★By whom: Person/Party interested★How: Notice of Opposition +

Evidence★Grounds: Same as Pre-grant

represenation

Process

★Within 12 months after grant★Controller to immediately inform

patentee★Patentee to file response

★Opponent to file response to patentees statement within 1 month

★Controller to appoint opposition board

★Opposition board to give report in 3 months

★Opportunity for hearing★Controller’s Decision

Revocation

★When: Any time after grant★By whom

○ Person/Party Interested○ Respondent in a suit for infringement○ Central Government

○ Controller - on instructions from Central Government

○ High Court

★Opponent to file response to patentees statement within 1 month

★Controller to appoint opposition board

★Person/Party Interested:

○ Grounds for revocation - same as opposition

○ Non-working of patent○ Surrender of patent rights

★Central Government○ Public interest○ Non-working of patents

★Controller - on directions from government○ patent relating to atomic energy

★High Court:○ Revocation for Government use

★Respondent: ○ Counter-claim

Why oppose or revoke?

★Public participation★Stringent grant standards★Avoid grant of frivolous patents★Alternative to litigation★Licence negotiation tactic★Delay tactic

Thank you