Patent

Patent OppositionOpposition to a Patent can filed in 2 waysPre Grant OppositionCan be filed by any personAfter the publication of patent applications11 Grounds for representation (Pre Grant Opposition)Some of them are:Wrongfully obtained the invensionInvention is anticipatedApplication does not disclose the source or geographical originApplication does not disclose the inventive steps.

Section 25(1) of the Patent (Amendment) Act 2005 provides provisions for pre grant opposition of Patent. Under this provision any person or any third party or Government may challenge the application of grant of patent and inform to the controller of Patents for opposition, in writing against the grant of a patent after the application for a patent has been published but before the grant of a patent a patent. Pre-grant opposition acts as a defensive shield to confirm the validity of the patent applications before patents are granted to them. Furthermore pre grant opposition proceeds as a business approach, where opponents take it as a golden opportunity for opposing the unlawful protective rights.Pre-grant opposition can be made on the grounds listed under section 25(1)(a) to (k) of the Patent Amendment Act, 2005:Wrongfully obtaining the inventionanticipation by prior publicationanticipation by prior date, Prior claiming in IndiaPrior public knowledge or public use in IndiaObviousness and lack of inventive stepnon patentable subject matterinsufficiency of description of the inventionnon-disclosure of information as per the requirement or providing materially false information by an applicantPatent application not filed within 12 months of filing the first application in a convention countrynondisclosure/ wrong mention of source of biological materialInvention anticipated with regard to traditional knowledge of any community, anywhere in the world.

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2. Pre Grant OppositionShould be filled within 12 months from grant of patentOnly by person interested11 Grounds for Post Grant OppositionSome of them are:Wrongfully obtained the inventionInvention is anticipatedApplication does not disclose the source or geographical originApplication does not disclose the inventive steps.

Post grant opposition may be filed at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of the patent. Under this provision any person interested may give notice of opposition to the Controller in the prescribed manner on any of the grounds mentioned in section 25 of the Patent (Amendment) Act 2005. Section 2(1)(t) of Indian patent act defines "person interested" as including a person engaged in, or in promoting, research in the same filed as that to which the invention relates. In addition, interested person may also include any organization that has a manufacturing or trading/ financial interest in the goods related to the patented product.Similar to the pre-grant opposition, a post-grant opposition may be filed on a number of grounds as specified under section 25(2) of the Act. It is notable that many of the grounds are similar to the grounds required for filing pre-grant opposition.

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Case Neon Laboratories Pvt.Ltd. vs 4) Assistant Controller Of ... on 26 November, 20107In a recent decision in a writ petition, the Bombay High Court interpreted Section 25(1) of the Patents Act to categorically hold that when a pre-grant opponent requests for a hearing, it is mandatory on the part of the Controller to grant the pre-grant opponent such a hearing. The decision was delivered in a writ petition filed by Neon Labs against the order of the Patent Controller granting a patent to Troika Pharma pursuant to Rule 55(6) of the Patent Rules, 2003 in a pre-grant opposition.

Stages from filing to grant of a patent

STAGES - FILING TO GRANT OF PATENTPUBLICATION OF APPLICATIONREQUEST FOR EXAMINATIONGRANT OF PATENT3rd Party RepresentationRevocation/AmendmentOPPOSITION

PROMPTLY AFTER 18 MONTHS FROM P.D. WITHIN 48 MONTHS FROM F.D. ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS WITHIN 12 MONTHSFILING OF APPLICATIONPROVNL. / COMPLETE

Decision of Controller

EXAMINATION-ISSUE OF FER

Appeal

Appellate Board

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Obtaining a patentFile an application for patentWith one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant /agentPay the required feeInformation concerning application form and details of fee available at www.ipindia.nic.in Guidelines for applicants also available on this website

Formality CheckAn Examiner checks the formal requirements before accepting the application and the fee this is done immediatelyIssue of application number and the cash receipt this is done the same dayIn case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days

PublicationApplication is kept secret for a period of 18 months from the date of filingIn 19th month, the application is published in the official journal this journal is made available on the website weeklyApplicant has an option to get his application published before 18 months alsoIn that case, application is published within one month of the request

Request for ExaminationApplication is examined on requestRequest for examination can be made either by the applicant or by a third partyA period of 48 months, from the date of filing, is available for making request for examination

Examination Application is sent to an Examiner within 1 month from the date of request for examinationExaminer undertakes examination w.r.t.whether the claimed invention is not prohibited for grant of patent whether the invention meets the criteria of patentability

Issue of FERA period of 1 to 3 months is available to Examiner to submit the report to the Controller1 months time available to Controller to vet the Examiners report First Examination Report (FER) containing gist of the objections is issued within 6 months from the date of filing of request

Response from the Applicant12 months time, from the date of issue of FER, is available to the applicant to meet the objections

If objections are met, grant of patent is approved by the Controller within a period of 1 month

Pre-grant Opposition

After publication, an opposition can be filed within a period of 6 months

Opportunity of hearing the opponent is also available

Examination of Pre-grant Opposition

Opposition (documents) is sent to the applicant

A period of 3 months is allowed for receipt of response

Consideration of Pre-grant OppositionAfter examining the opposition and the submissions made during the hearing, Controller may Either reject the opposition and grant the patent Or accept the opposition and modify/reject the patent application This is to be done within a period of 1 month from the date of completion of opposition proceedings

Grant of a PatentA certificate of patent is issued within 7 days

Grant of patent is published in the official journal

Renewal FeeTo be paid within 3+6 months from date of recording in the register [sec 142 (4) ]No fee for 1st and 2nd yearRenewal fee, on yearly basis, is required to be paid for 3rd to 20th for keeping the patent in forceDelay upto six months from due date permissible on payment of fee for extension of time Patent lapses if renewal fee is not paid within the prescribed period