An Overview of Patent Opposition

A patent is a crucial element of Intellectual Property Rights (IPR), granting inventors exclusive rights over a novel product or process that presents a unique technical solution to a problem. It provides the patent holder with the exclusive authority to produce, sell, and license the invention for a specified period.

To maintain the integrity of the patent system and ensure that only deserving innovations are granted such exclusivity, the Patent Opposition mechanism has been established under the Patents Act, 1970. This legal provision allows any individual or entity to raise objections against the grant of a patent, preventing the misuse of patent rights and protecting the interests of genuine innovators.

Patent opposition plays a critical role in:

• Ensuring that patents are granted only to truly novel and inventive ideas.

• Preventing frivolous or unethical patent claims.

• Safeguarding public interest and promoting fair competition in the market.
  
  

Legal Grounds –
Legal Reasons for Patent Opposition in India

Under the Patents Act, the following are recognized legal grounds on which a patent may be opposed, either before (pre-grant) or after (post-grant) the patent is awarded:

1. Wrongful Applicant
   The person applying for the patent is not the actual inventor or has wrongfully obtained the invention.
   
   

2. Lack of Novelty
   The invention is not new or has been anticipated by prior art, including prior publications or existing knowledge.
   
   

3. Lack of Inventive Step (Obviousness)
   The invention does not involve an inventive step and is obvious to a person skilled in the art.
   
   

4. Non-Patentable Subject Matter
   The invention falls under categories excluded from patentability, such as abstract ideas, traditional knowledge, or scientific principles.
   
   

5. Insufficient Disclosure
   The patent specification fails to fully and clearly describe the invention or the method by which it is to be performed.
   
   

6. Prior Use
   The invention was publicly used or known in India before the priority date of the patent application.
   
   

7. Ineligible Subject Matter
   The invention does not qualify as a patentable subject under Indian law, such as immoral inventions or those contrary to public order.
   
   

8. Failure to Disclose Information
   Non-disclosure or wrongful disclosure of information regarding corresponding foreign applications.
   
   

9. Misleading Claims
   The claims made in the patent specification are not clearly defined, not supported by the description, or go beyond the scope of the invention disclosed.
   
   

These grounds ensure that patents are not granted to inventions that are not genuinely innovative, thus maintaining a robust and credible patent system.

Types of Patent Opposition Proceedings in India

In India, the Patent Opposition mechanism allows for two types of proceedings to challenge the validity of a patent application or a granted patent. These are crucial to maintaining a robust patent system and avoiding the grant of undeserved patents.

1. Pre-Grant Patent Opposition

(Section 25(1) of the Patents (Amendment) Act, 2005)

When:
After the publication of the patent application but before the grant of the patent.

Who Can Oppose:
Any person, third party, or even the Government.

Purpose:
To act as a preventive mechanism ensuring that only valid, original, and deserving inventions receive patent protection. Pre-grant opposition also serves as a strategic tool to prevent illegitimate monopoly rights that could harm public interest or competition.

Grounds for Pre-Grant Opposition:

• Wrongful acquisition of the invention – [Section 25(1)(a)]

• Prior publication before the filing date – [Section 25(1)(b)]

• Anticipation by prior claims in India – [Section 25(1)(c)]

• Public knowledge or use in India before the priority date – [Section 25(1)(d)]

• Lack of inventive step or obviousness – [Section 25(1)(e)]

• Non-patentable subject matter – [Section 25(1)(f)]

• Incomplete or insufficient disclosure – [Section 25(1)(g)]

• Failure to disclose information under Section 8 or providing false material information – [Section 25(1)(h)]

• Delayed application in a convention country beyond the 12-month period – [Section 25(1)(i)]

• Incorrect or undisclosed source/geographical origin of biological material – [Section 25(1)(j)]

• Anticipation by traditional knowledge of any community worldwide – [Section 25(1)(k)]
  
  

2. Post-Grant Patent Opposition

(Section 25(2) of the Patents Act, 1970)

When:
Within 12 months from the date of publication of the granted patent.

Who Can Oppose:
Any interested person or party involved in or promoting technological research.

Procedure:

• A Notice of Opposition must be filed, containing:

  • A statement of opposition detailing the facts and evidence.

  • The nature and grounds of opposition.

  • The relief sought.

• The patentee must file a written reply along with evidence (if any) within 2 months, failing which the patent is considered revoked.

• An Opposition Board (comprising 3 members, excluding the original examiner) is constituted by the Controller to examine the case.

• The Board gives its recommendations within 3 months based on the evidence from both sides.

• After hearing both parties, the Controller may decide to maintain, amend, or revoke the patent and will communicate the decision with reasons.
  
  

Grounds for Post-Grant Opposition:

• Unauthorized acquisition of the invention.

• Anticipation by prior publication or prior use.

• Obviousness or lack of inventive step.

• Subject matter not patentable.

• Non-disclosure or false information.

• Traditional knowledge or incorrect disclosure of biological source
  
  
  The Pre-Grant and Post-Grant opposition mechanisms together serve as critical checks in the Indian patent system. They promote innovation by preventing unjustified monopolies and encouraging transparency, fairness, and accountability in the patent granting process.

Pre-Grant vs. Post-Grant Patent Opposition: Key Procedural Differences

While both Pre-Grant and Post-Grant Patent Oppositions are designed to challenge the validity of a patent, they differ significantly in terms of procedure, legal standing, and strategic implications. Below is a comparison highlighting their major procedural distinctions:

1. Eligibility to File

• Pre-Grant Opposition:
  Can be initiated by any person, including the general public, third parties, or the Government.
  (Section 25(1), Patents Act, 1970)

• Post-Grant Opposition:
  Can only be filed by an interested person, typically someone engaged in research, commercial activity, or affected by the patent.
  
  

2. Right to Participate

• Pre-Grant:
  The Act is silent on whether the patent applicant has a definitive right to participate in the opposition proceedings. The applicant may respond, but participation rights are not clearly defined.

• Post-Grant:
  The patentee and the opponent have explicit rights to participate. Both parties can present evidence, attend hearings, and defend their positions.
  
  

3. Hearing Rights

• Pre-Grant:
  The Indian Patent Act does not automatically grant a hearing to the opponent. The opponent must request a hearing, which is granted at the discretion of the Controller. The procedure lacks clarity on whether hearings are held in the presence of the applicant.

• Post-Grant:
  The opponent has a clear right to be heard. A formal Opposition Board is constituted to evaluate evidence and make recommendations, followed by a structured hearing process.
  
  

4. Infringement Proceedings

• Pre-Grant:
  Infringement actions cannot be initiated since the patent is still under consideration and not yet granted.

• Post-Grant:
  The patent is granted, so infringement lawsuits can be initiated by the patentee during the opposition.
  
  

5. Cost and Time Efficiency

• Pre-Grant:
  Generally considered to be more cost-effective and faster due to minimal procedural requirements and limited hearing obligations.

• Post-Grant:
  Typically involves higher costs and longer timelines, owing to formal proceedings, hearings, and evidence reviews similar to court trials.
  
  

6. Remedy Against Controller’s Decision

• Pre-Grant:
  The only remedy against the Controller’s decision is to file a writ petition under Article 226 of the Indian Constitution before the High Court.
  (As upheld by the IPAB – Intellectual Property Appellate Board)

• Post-Grant:
  Decisions can be contested through judicial forums, but this may lead to delayed resolution, often allowing the patentee to maintain an invalid monopoly during the extended litigation process.
  
  

7. Speed of Proceedings

• Pre-Grant:
  Moves relatively faster as there are fewer procedural steps, fewer parties involved, and decisions are made without the need for extensive trials.

• Post-Grant:
  Slower due to the formation of the Opposition Board, structured timelines for submissions, multiple hearings, and opportunities for extensions.
  
  

8. Dual Opposition Possibility

• It is permissible for a person who filed a Pre-Grant Opposition to later file a Post-Grant Opposition on the same patent, especially if it was granted despite initial objections.
  
  

Conclusion:
While Pre-Grant Opposition offers a quick, accessible method to challenge patent applications, Post-Grant Opposition ensures procedural fairness with defined roles and rights. Understanding these procedural differences is crucial for applicants, competitors, and legal practitioners in forming effective patent strategies.

Why Choose Fastzeal for Patent Opposition?

Patent opposition is a powerful and cost-effective tool for challenging questionable patents. Compared to other invalidation mechanisms, the opposition process under the Indian Patents Act, 1970 is less complex and more economical, offering a strategic opportunity for third parties to contest a patent's validity—either before it is granted (Pre-Grant) or within one year of grant (Post-Grant).

However, navigating the opposition process can be time-consuming and legally intricate, requiring thorough understanding of patent law, procedural requirements, and strategic filing. That’s where Fastzeal comes in.

Expertise That Matters

Our team of experienced professionals provides end-to-end guidance throughout the patent opposition process. Whether you're preparing documents, filing notices, or attending hearings, our experts ensure every step is executed accurately and efficiently.

Time-Efficient Solutions

We understand that time is of the essence. Our streamlined processes and proactive approach help reduce delays and ensure your opposition is filed and pursued within the statutory timelines.

Strategic Legal Support

At Fastzeal, we don’t just file oppositions—we build strong, evidence-backed cases that improve the chances of successful outcomes. Our in-depth legal expertise ensures that your opposition stands on firm legal grounds.

Cost-Effective Services

Challenging a patent doesn't have to be expensive. Fastzeal provides affordable legal support without compromising on quality, helping you protect your interests while staying within budget.

Let Fastzeal Be Your Trusted Partner

From document preparation to legal representation, our dedicated team is with you every step of the way to ensure a smooth and successful patent opposition process.

Choose experience. Choose reliability. Choose Fastzeal.