PATENT OPPOSITION AND
STRATEGY
Essenese Obhan, Obhan & Associates
Topics for Today’s Discussion






Patent Procedure and Rights of a Patentee
What is Opposition
Types of Opposition
Grounds of Opposition
Procedure
Strategies
Patent Procedure (insert chart)
Rights of Patentee



Can institute infringement proceedings only post
grant
Can claim damages from date of publication of
application
If application amended after publication – must
show good faith to claim damages.
Examination at the Patent Office
Requirements under Law
Actual Examination
1. Novelty (not in public domain)
Not published in any document
Yes(?)
Not used in India (or elsewhere in the world?)
No
Not orally known or disclosed
No
Not traditional knowledge
No
2. Inventive Step
not complete
3. Patentable u/s 3
Not new form, new use, new property?
not complete
What is Opposition?

Third party objection to a grant of a patent

Reasons for opposition






Raise the examination standard
Prevent competitors from obtaining frivolous patents
Prevent surprises
Avoid costly litigation
Reduce/Avoid Damages
Negotiate favorable licenses?
Types
• PRE GRANT
Before Grant
• Any person
• POST GRANT
Within One
year of grant
• “Person interested”
• REVOCATION
Anytime after
grant
• “Person interested”
“Person Interested”




person engaged in or promoting research in that field
Possession of patents related to the same matter
Manufacturing interest
Trading interest –



interest must be real, definite and substantial, and must not
arise from what the opponent proposes to do. Thus mere
possession of an article covered by the patent is not enough.
Financial interest
Specification contains statements that are injurious to
the opponent
Grounds for opposition
Not Novel
Not Inventive
Not Patentable
Non Disclosure
False Convention
claim
Insufficiency
Publicly known
or Used
Wrongful
Obtaining
Traditional or
oral knowledge
Pre Grant

When?
Where?
Fees?
Format?
• After Publication of patent application- Before
Grant of Patent
• Patent Office where patent application was filed
• No Fees
• No prescribed format.
Hearing ?
• If requested by opponent
Standard?
• More representation than opposition
Appeal?
• No appeal
Pre Grant Procedure
1
2
3
4
5
6
• File representation including statement and evidence
• Considered only after request for examination filed
• Notice of representation and evidence sent to applicant
• Applicant responds within three months
• Hear the opponent if hearing requested
• Patent refused, amended or granted
Post Grant
When?
• After Publication of grant but within 1 year from
publication of grant
Where?
• Patent Office where patent application was filed
Fees?
Format?
• Rs. 3000/12000 – including fees for attending hearing
• Prescribed Format
Hearing ?
• If requested by opponent
Standard?
• Inter –se opposition proceedings with Controller having
power of a Civil Court
Appeal?
• Appeal to the IPAB – within three months
Post Grant Procedure
1
• File Post Grant Opposition with evidence
2
• Patentee to respond within 2 months
3
• Opponent’s reply to patentee’s evidence
4
• Opposition Board formed – 3 members
5
• Recommendations received from Board
6
• Hearings
7
• Patent refused, amended or granted
Revocation
When?
Where?
Fees?
Format?
• After Publication of patent grant – throughout the term
• IPAB and HC if counter in an infringement
• Rs. 5000
• Prescribed Format
Hearing ?
• Inter se hearings
Standard?
• Inter –se opposition proceedings at IPAB, Civil suit at
the HC
Appeal?
• Appeal to the HC
Why pre grant should never be missed

Free

Simple Procedure

Easier to prevent grant than to revoke grant

Avoids damages if good faith argument used

Puts the patentee on a back foot before grant
Suggested Strategies

Determine internal policy

Set up a patent watch group within the organization




Keep ready list of known competitors/patents
Identify potentially troublesome patents
Prepare frame work of objections in advance
Maximize use of pre – grant
Thank you
Q&A


[email protected]
www.obhanandassociates.com