PATENT OPPOSITION AND STRATEGY Essenese Obhan Obhan Associates

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? • After Publication of patent grant – throughout the term • IPAB and HC if counter in an infringement • Rs. 5000 Format? • 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

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