This article is written by Anurag Pratap Singh, BBA LL.B., 4th Year, Noida International University, Gautam Buddha Nagar, during his internship at LeDroit India
SCOPE OF THE ARTICLE
- Abstract
- Keywords
- Introduction
- Meaning of Post-Grant Opposition
- Regulatory Regime for Post-Grant Opposition
- Bases for Post-Grant Opposition
- Parties Eligible to Initiate Post-Grant Opposition
- Process for Post-Grant Opposition
- Timeline for Post-Grant Opposition
- Opposition Board and Patent Controller in Post-Grant Opposition
- Burden of Proof and Evidence in Post-Grant Opposition
- Consequence of Post-Grant Opposition
- Judicial Review of Post-Grant Opposition
- Importance of Post-Grant Opposition to Patent System
- Conclusion
- References and Hyperlinked Sources
Abstract
Post-grant opposition refers to a vital tool in patent laws that enables any concerned party to oppose a granted patent on the grounds that the invention is invalid. It acts as a defense against any unlawful monopoly of inventions, ensuring that only legitimate inventions receive protection under the law. This concept is very vital since the protection of patents has an effect on innovation, competition, and technology accessibility.
While the purpose of post-grant opposition is not to discourage people from inventing, but rather to ensure the accuracy in granting patents, errors may occur during examination of applications at patent offices. This concept makes up for these flaws through second-level scrutiny. This paper aims to provide information about this concept, including what it is, its legal environment, grounds, procedures, and other related aspects.
Keywords
Post-grant opposition, validity of patents, intellectual property rights, Controller of Patents, Opposition Board, prior art, inventive step, revocation, patent laws, public interest.
Introduction
The patent system grants certain rights for a limited period to the inventor in exchange for disclosure of the entire invention. Yet sometimes, during the process of examination carried out in the patent office, there might arise certain issues of the non-compliance of granted patents with the patent laws in terms of novelty or inventive step.
That is why post-grant opposition comes into use, allowing third parties to appeal to the validity of a granted patent within a certain period of time after grant. Thus, post-grant opposition is considered as a way to control the patent system and make sure that valid and well-founded patents only exist.
As opposed to litigations, post-grant opposition does not take place in courts but within the patent office; this fact provides additional benefits as far as speed and cost of the process is concerned.
Meaning of Post-Grant Opposition
Post-grant opposition is a process in law that allows a patented invention to be challenged legally after it has been registered by any interested person during the set timeframe.
In layman’s language, it can be termed as challenging the patent in order to check whether it was supposed to be granted. The process involves a thorough analysis of the patent and needs sufficient evidence.
It should be differentiated from pre-grant opposition, which takes place before the invention is granted. Post-grant opposition is different in the sense that since the patent has been granted, there is more professionalism involved.
The objective is to make sure that only valid patents are able to pass through the process while those which infringe the public domain knowledge do not pass.
Regulatory Regime for Post-Grant Opposition
Post-grant opposition in India is mainly regulated under the Patents Act, 1970, and the Patents Rules, 2003. The following provisions lay down explicitly the guidelines governing the filing, examination, and disposal of the opposition petition.
These include:
Oppositioner’s eligibility for filing
Time period for filing
Opposition grounds
Process of hearing and pleading
Functions of the Opposition Board
Authorities of the Controller of Patents
The Controller of Patents is vested with the discretion to make a decision in such proceedings. However, in the process of making such decisions, the Controller has an Opposition Board that makes a well-thought-out suggestion after considering the issue at hand.
Bases for Post-Grant Opposition
Opposition to patents will not be on the grounds of vagueness. On the other hand, specific legal grounds will be provided on which patents may be challenged. They include:
Lack of novelty: The invention had been made available or disclosed anywhere in the world prior to the priority date; therefore, it should not be patented.
Lack of inventive step: If the invention was obvious to someone in the particular field, then the invention would not be eligible for patenting.
Non-patentable subject matter: There are certain inventions that do not fall under the category of patentable inventions as per the law.
Insufficiency of disclosure: If the invention had not been properly disclosed in the patent specification.
Wrongful obtaining of the invention: It means if the applicant was not the true inventor or had obtained the invention wrongfully.
Prior public knowledge or use of invention: It implies that the invention was already being used or publicly known before filing the application.
Failure to disclose information: Applicant had not disclosed information during examination of the patent application.
Parties Eligible to Initiate Post-Grant Opposition
“Any ‘person interested’ may file for post-grant opposition.” The phrase is construed liberally and need not be confined to being the inventor or the competitor.
This could comprise:
Competitors
Industry experts
Research organizations
NGOs
Anyone having technical or commercial interest
This broad range makes sure that it is not merely the state which decides on the issue of patent validity but the process involves public participation.
Process for Post-Grant Opposition
The opposition procedure after the grant is an ordered and staged process as follows:
Firstly, the opponent needs to file the written notification of opposition setting forth grounds and evidence of the objection. It is sent to the Patent Office.
Then the owner of the patent gets the right to make a counter statement in defense of his patent.
Next both sides must provide evidence that can consist of scientific literature, technical papers, opinions of experts or any prior art.
An Opposition Board is set up for examination of the case from the technical and legal point of view. The Board examines all the documents and draws up a report containing its recommendation.
Then the hearing is organized at which both parties make their oral statements.
At last, the Controller of Patents examines all the evidence, takes into account the recommendation of the Board and makes his reasoned order as follows:
To maintain the patent,
to amend the claims of the patent,
or to revoke the patent.
This process is quasi-judicial, that means it has judicial character.
Timeline for Post-Grant Opposition
Among the most significant restrictions of post-grant opposition is the fact that it has to be instituted within 12 months from the date of granting of the patent.
It is significant as it ensures predictability for the patent owner and restricts any indefinite opposition.
There is no mandatory statutory period following institution of proceedings. Nevertheless, there usually goes:
Response time by patentee
Evidence time
Establishment and report of Opposition Board
Hearings and final decision
The actual period may depend on a number of factors including complexity of the case, volume of the documentation, as well as patent office’s load.
Opposition Board and Patent Controller in Post-Grant Opposition
The role of the Opposition Board is extremely crucial from the point of view of technology. The Board consists of members having expert knowledge of the specific field of technology and the legal officers.
But the decision is not made by the Board; it just makes recommendations.
The final decision rests in the hands of the Controller of Patents who has to pass the final order in relation to the recommendations of the Board. The Controller of Patents can either accept the recommendations or reject them, but has to give reasons for the same.
Burden of Proof and Evidence in Post-Grant Opposition
During post-grant opposition, the burden of proof lies with the opponent who has to prove a good case for which reason the grant of the patent was not justified.
There is a very important role played by evidence, which includes:
Earlier published scientific papers
Patents granted in other jurisdictions
Technical reports
Public use/prior knowledge
Affidavits of experts
Once a good case is proven, the burden of proof moves to the patentee to prove that his patent is valid.
The whole proceeding is more document oriented rather than being oral evidence oriented.
Consequence of Post-Grant Opposition
There are three possible results from the post-grant opposition process:
Patent revocation – when the patent is annulled due to invalidity.
Amendment to the patent claims – when some claims are amended or restricted.
Valid patent – when no valid grounds of opposition are found and the patent remains valid.
All of the above are of great importance to business and competition.
Judicial Review of Post-Grant Opposition
Judicial review is an essential feature of the Indian patent adjudication system as a means of protecting the patent system from any arbitrary, erroneous, and/or illegal decisions made during post-grant opposition procedure. While the Controller of Patents acts as a quasi-judicial body under the Patents Act, 1970, any decision made by him/her regarding the grant of a patent, validity of a patent, or termination of a patent, is amenable to judicial review. The doctrine of judicial review acts as a check on exercise of administrative discretion, in that, such exercise must always be done within the bounds of law and in accordance with the principles of natural justice.
The essence of judicial review is not to make a determination regarding the merit of the invention per se but rather to find out whether there was any flaw in the decision-making process. In this regard, the courts would see whether the Controller acted within his/her statutory authority, interpreted the provisions of the Patents Act and Rules correctly, considered all relevant materials, ignored irrelevant material, gave sufficient reasoning, and acted in accordance with the principles of audi alteram partem and nemo judex in causa sua.
Any decision that is arbitrary, perverse, without evidence, improper in procedure, or against the law can be overturned, varied, or sent back for re-hearing.
Prior to 2021, any appeal in respect of orders of the Controller was decided by the Intellectual Property Appellate Board (IPAB) in accordance with Section 117A of the Patents Act. However, after the passage of the Tribunals Reforms Act, 2021, the IPAB has been dissolved, and jurisdiction over any such appeal has been vested in the relevant High Courts.
This change in institutions has been helpful to improve judicial control because patent cases have now been brought within the judicial mainstream, and it has become possible to develop a consistent and authoritative patent jurisprudence. The High Courts have appellate and constitutional jurisdiction under Article 226 and 227 of the Constitution of India, especially when there is a violation of a statutory provision, denial of natural justice, misuse of power, jurisdictional defect, or manifest illegality. However, in cases of very specialized and technical questions, the courts have usually shown judicial restraint.
In case a party is not satisfied with the ruling of the Controller, he can approach the High Court for an appeal.
However, in most cases, the court will not go into technical aspects of the matter unless there is some flaw in the process. Through judicial review, the following can be ensured:
Procedural fairness
Correctness of law
No arbitrariness in decision making
Importance of Post-Grant Opposition to Patent System
Post-grant opposition has an important role to play in keeping the patent system honest. It ensures that there are no unwarranted monopolies created and only inventions worthy of the patent get protected.
Further, post-grant opposition also prevents public domain information from getting erroneously turned into private knowledge. Moreover, it enhances the quality of the granted patent by ensuring its thorough examination. From the perspective of efficiency, it is a cheaper alternative to litigation and also helps to prevent unwarranted litigation cases.
Overall, it is good for innovation and fairness in the intellectual property regime. This is particularly important in that it ensures that weak and unwarranted patents cannot create monopolies. Moreover, it ensures public interests by ensuring that the idea which is in the public domain does not get erroneously privatized.
In doing so, it ensures the credibility of the patent system by ensuring that the decisions are subject to scrutiny. Further, it saves both time and money as compared to litigation in courts.
Conclusion
In post-grant opposition, there is another level of review for the granted patents. This helps rectify any errors and eliminate patents that may be invalid. Despite being tedious and technical in nature, post-grant opposition is highly significant in ensuring the proper balance in the patent regime. Post-grant opposition forms an important aspect of contemporary patent law. Post-grant opposition does not mark the end of examination for patents but rather just one stage of the same. Post-grant opposition allows third parties to question any weak or invalid patents. This helps in maintaining a balance between public interest and the rights of innovators.
Despite being bound by timelines and procedures, post-grant opposition has a highly significant effect on the patent system.
References
- Narayanan, P., Patent Law, 4th ed., Eastern Law House, Kolkata, 2006.
- Bently, Lionel, Brad Sherman, Dev Gangjee & Phillip Johnson, Intellectual Property Law, 6th ed., Oxford University Press, 2022.
- Cornish, William, David Llewelyn & Tanya Aplin, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 9th ed., Sweet & Maxwell, 2019.
- Wadhera, B. L., Law Relating to Patents, Trademarks, Copyright, Designs and Geographical Indications, Universal Law Publishing, New Delhi, 2018.
- The Patents Act, 1970 (Act No. 39 of 1970), as amended.
- The Patents Rules, 2003, as amended.
- Controller General of Patents, Designs and Trade Marks (CGPDTM), Manual of Patent Office Practice and Procedure, Version 3.0, 2019.
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1994.
- World Intellectual Property Organization (WIPO), WIPO Patent Drafting Manual, 2022.
- Basheer, Shamnad, “India’s Tryst with TRIPS: The Patents (Amendment) Act, 2005,” Indian Journal of Law and Technology, Vol. 1, 2005.
- Novartis AG v. Union of India, (2013) 6 SCC 1.
- Enercon (India) Ltd. v. Aloys Wobben, (2014) 5 SCC 1.
- J. Mitra & Co. Pvt. Ltd. v. Assistant Controller of Patents & Designs, 2008 (37) PTC 71 (Del).
- Ministry of Commerce and Industry, Government of India, Annual Report of the Office of the Controller General of Patents, Designs and Trade Marks (latest edition).
- World Intellectual Property Organization (WIPO), WIPO Intellectual Property Handbook, 2nd ed., Geneva.
