Rajiv Gandhi National University of Law, Punjab

(Established by Punjab Act No. 12 of 2006) Bhadson Road, Sidhuwal, Punjab

(Accredited ‘A’ Grade by NAAC)

Project Submission of
Intellectual Property Right

for
B.A. LL.B. (Hons.) VIth
Semester
Session 2020-2021

Topic: Opposition Under Patent Act : An Analysis

Submitted by: Deepak Kilania

Roll No.: 17048
Group No.: 10

Submitted to : Dr Geetika Walia

(assistant professor of law)
 TABLE OF CONTENT
A.INTRODUCTION

A.1. Evolution of opposition system in india.

A.2. Stages of opposition.

B. Types of opposition in patent law

B.1.Pre -Grant Opposition.

B.2.Post-Grant Opposition.

C. Procedural Difference between Pre-Grant and Post-Grant patent

opposition in india.

D. Authority for invoking opposition in patent law.

D.1.Patent office.
D.2.The intellectual Property applleate Board.

E. Procedure for filling Pre grant opposition under Section 25(1).

F. Procedure for filling Post grant opposition under Section 25(2).

G. Grounds for Opposition under section 25(1) and section 25(2).

H.CASES:-

H.1. Novartis AG vs. Natco Pharma Ltd.

H.2. Hindustan Lever Ltd. Vs. Godrej Soaps.

 INTRODUCTION

Opposition proceedings are the litmus test for an invention claiming patent protection under the
Patent law. Since patents are the instruments of monopoly, it is imperative that this monopoly is
tolerated only if strictly justified by the public policy and the national legislation. From the
perspective of the society at large, opposition filters the bogus and frivolous claims for patent
protection and from the standpoint of the innovating industry it thwarts the erosion of their
commercial profits. Keeping in sight the enormous significance of opposition in the grant of
patent, this article shall delve into the metamorphosis of the opposition system in India, stages of
opposition and efficacy of the present provisions in the context of the paradigm shift of patent
regime in certain technologies.1

Evolution of Opposition system in India

Under the original Patents Act, the opposition to the patent could be made only after the
publication of the acceptance of the complete specification. Considering the time lines for filing
complete specification, examination report, putting the application in order after examiner’s
report, any person interested had to wait for a period of 45 months before filing an opposition.
The status quo was maintained till the patent Amendment Ordinance 2004, overhauled the
opposition system by introducing the Pre-grant Opposition proceedings.2

By virtue of amendment in 2004, any person could make a representation of opposition after the
publication of the patent application in the Official Gazette. As the publication of the application
generally took place after 18 months from the date of filing the application or date of priority
whichever was earlier, the waiting period was significantly reduced. However, pre-grant
opposition was far from being perfect. The major draw back of Pre grant opposition was that the
grounds were circumscribed only to the question of patentability and wrongful disclosures. The
Grounds for Pre-grant Opposition vis-à-vis post- grant opposition where whittled down.

1
. http://techcorplegal.com/Blog_Technology_Law_Business_Research/2013/07/07/lawasia-patent_opposition_india/

http://techcorplegal.com/Indian_Law_Firm/patent_opposition_in_india_pregrant_patent_opposition_post_grant_opposition/ retri
eved on 11/11/2013
The myopic reach of the pre-grant opposition was severely flayed by all and sundry.
Consequently, when the Amendment Act of 2005 was replaced for the Ordinance, the grounds of
pre-grant were magnified to include all those that formed the part of the post-grant opposition.

Stages of Opposition

There are two stages in which the opposition can be launched viz: Pre-grant stage and the Post-
grant Stage. The Pre grant opposition can be made at any time after the patent application has
been published but before the grant of patent. Ordinarily, a patent application is published only
after a period of 18 months from the date of filing the application or date of priority whichever
was earlier. The Post grant opposition can be filed at any time after the grant of patent but within
a period of 12 months from the date of publication of grant of patent.

The difference between the two oppositions is miniscule. While ‘any person’ can file the former
only the ‘interested person’ can file the latter. In the latter case the person desiring to give the
notice of opposition must demonstrate specific interest in opposing the application. Interested
person would include any person engaged in, or in promoting, the research in the same field as
that to which the invention relates. Another important difference between the two stages of
opposition is that the pre grant opposition is that procedure. The pre grant the Controller
examines opposition alone whereas the Opposition Board that comprises three members
examines the post grant opposition notice.3

Types of oppostion in patent law

Pre Grant Opposition:

Section 25(1) of the Patent (Amendment) Act 2005 provides provisions for pre grant opposition
of Patent.4 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

3
http://www.lawteacher.net/administrative-law/essays/a-patent-opposition-comparison-between-countries-administrative-law-
essay.php#ftn18
4 https://www.lakshmisri.com/Uploads/MediaTypes/Documents/L&SWebsite_IPR_TopDisc_GunjanSharma.pdf
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, 2005:5

• Wrongfully obtaining the invention

• anticipation by prior publication
• anticipation by prior date, Prior claiming in India
• Prior public knowledge or public use in India
• Obviousness and lack of inventive step
• non patentable subject matter
• insufficiency of description of the invention
• non-disclosure of information as per the requirement or providing materially false
information by an applicant6
• Patent application not filed within 12 months of filing the first application in a convention
country
• nondisclosure/ wrong mention of source of biological material
• Invention anticipated with regard to traditional knowledge of any community, anywhere
in the world.7

Post Grant Opposition:

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

5
"Official website of Intellectual Property India". ipindia.nic.in.

6 "Intellectual Property of India- ISA, IPEA". ipindiaservices.gov.in.

7 "Meeting India IP challenges-Source-Managing Intellectual Property"
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.

Procedural Differences Between Pre Grant And Post Grant Patent Opposition
In India:

Pre and post –grant opposition both contain the almost identical grounds for proceeding the
opposition and there is nothing which excludes a pre-grant opponent from subsequently filing a
post grant opposition. However despite the similarities there are also several procedural
differences between the two types of the opposition which are illustrated below:8

• The most important difference between pre grant and post-grant opposition is that pre
grant proceedings may be initiated by "any person", while only a "person interested" can
introduce a post grant opposition.
• Next remarkable difference is with infringement proceedings. Infringement proceedings
can not be started during pre grant opposition prosecution as the patent is still in the
application stage, where as infringement proceedings may be introduced in post grant
opposition.
• Section 25(1) of the Act does not openly allow the patent applicant an opportunity to be
heard in a pre-grant opposition.
• Moreover, the Indian Patents Act does not explicitly allow the opponent to be heard in a
pre-grant opposition. The opponent has to make a request for hearing and the rules do not

8
Shikha, Neeti, Comparative Study of Pre Grant and Post Grant Patent Opposition in India (January 10, 2009). Available at
SSRN: http://ssrn.com/abstract=1503188 retrieved on 11/11/2013
 detail how a hearing is to be conducted. The opponent's right to be heard solely depends
upon the discretion of the Controller, who decides the same based upon the merit of the
opposition. Additionally, the rules are also not clear whether the opponent will be heard
in the presence of the applicant. In contrast, the opponent in a post-grant opposition can
proceed with the case irrespective of the merit of the notice of opposition.2
• Further more, as per the stand taken by IPAB on numerous occasions; there is no remedy
against an order of the controller in a pre-grant opposition except to file a writ petition
under Indian constitution.
• The main drawback of the post-grant opposition process is that this remedy is available
only through the courts, making redressal a lengthy process and, in the case of bad
patents, allowing the patent holder to enjoy a wrongful monopoly. This is of particular
concern in India, given the protracted nature of the judicial process.3
• Pre grant opposition on the other hand is more cost effective and result in faster disposal
of cases on merits thereby reducing the costs incurred in contesting the post grant
proceedings.
• It mechanism is faster as compared to post grant opposition where trials and extension of
hearings occurs in a conventional manner which it happens in the Courts. Unlike post-
grant opposition, there is no fee stipulated for filing a pre-grant opposition.4

Authority for involving opposition in patent law

Patent Office

The CGPDTM reports to the Department for Promotion of Industry and Internal Trade (DPIIT)
under the Ministry of Commerce and Industry and has five main administrative sections:9

• Patent Office
• Designs Registry

9
"Patent rules amendment 2012
• Trademarks Registry
• Geographical indications Registry
• Rajiv Gandhi National Institute of Intellectual Property Management (NIIPM)
• Patent Information System

The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai,
but the office of the CGPDTM is in Mumbai. The office of the Patent Information System and
National Institute for Intellectual Property Management is at Nagpur.10 The Controller General
(CG), who supervises the administration of the Patents Act, the Designs Act, and the Trade
Marks Act, also advises the Government on matters relating to these subjects. O.P. Gupta is the
current CG and took charge on 16 November 2015.]11 Under the office of CGPDTM, a
Geographical Indications Registry has been established in Chennai to administer
the Geographical Indications of Goods (Registration and Protection) Act, 1999.

The Intellectual Property Appellate Board

The Intellectual Property Appellate Board (IPAB) was constituted on September 15, 2003 by the
Indian Government to hear and resolve the appeals against the decisions of the registrar under
the Indian Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and
Protection) Act, 1999.Since April 2, 2007, IPAB has been authorized to hear and adjudicate upon
the appeals from most of the decisions, orders or directions made by the Patent Controller under
the Patents Act. Therefore all pending appeals of Indian High Courts under the Patents Act were
transferred to IPAB.The headquarter of the IPAB is located in Chennai. IPAB also has sittings at
Chennai, Delhi, Kolkata and Ahmedabad.

Procedure for filing Pre-Grant Opposition under section 25(1) :

Section 25(1) of the Indian patent (Amendment) Act 2005 provides a provision for filing a pre-
grant opposition against a patent application. Under this provision any person, any third party or
the Government may challenge the application of grant of patent and inform to the controller of
Patents of the opposition, in writing against the grant of a patent after the application for a

10
"Parliament discussion on Patent Office". Archived from the origina
11
"Outcome Budget 2007–2008" (PDF). Ministry of Commerce & Industry, Department of Industrial Policy &
Promotion, Government of India. Archived from the original (PDF) on 19 February 2009.
patent has been published and/but before the grant of the patent. Pre-grant opposition acts as a
defensive shield to confirm the validity of the patent applications before patents are granted to
them. The pre-grant opposition procedure acts as a safety net to capture questionable patent
applications before a patent is granted to them.
Proceedings Under Post-Grant Opposition under section 25(2):-
Any person can file a post-grant opposition by way of a representation to the Controller against the
grant of patent based on any of the ground. The representation is required to include a statement,
a request for hearing and evidence (if any) in support of the representation. The controller
considers the representation only after a request for examination for that patent application has
been filed. After considering the representation, the controller notifies the applicant with a copy of
12
the representation. The applicant is required to reply to the notification with his statement and
evidence (if any) in support of his application within three months from the date of the notice. The
Controller then based on the statement and evidence filed by the applicant either refuses the grant
of the patent or asks the applicant for amendment of the complete specification to his satisfaction.
Finally, after considering the representation and response by the applicant the controller proceeds
further by either rejecting the representation and granting the patent with amendments to the
complete specification or accepting the representation and refusing the grant of the patent within
one month from the completion of above proceedings.13
In India, the opposition proceedings take place before the controller general of patents. The major
advantage of initiating opposition proceedings with the India patent office is that the whole process
is strictly time bound, therefore interested parties do not have to go through lengthy and
tedious procedures, which may also involve considerable time till the matter is decided. The cost
incurred in opposition is also minimal compared to litigation costs.

Grounds for Opposition under section 25(1) and section 25(2):-

Some of the grounds for filing pre-and post-grant opposition are as under:

(a) Patent wrongfully obtained;

12
http://www.globaljurix.com/patent-opposition/
13
https://www.iam-media.com/law-policy/patent-opposition-process
(b) Prior publication;

(c) The invention was publicly known or publicly used in India before the priority date of that
claim;

(d) The invention is obvious and does not involve any inventive step;

(e) That the subject of any claim is not an invention within the meaning of this Act, or is not
patentable under this Act;

(f) Insufficient disclosure of the invention or the method by which it is to be performed;

(g) That in the case of a patent granted on convention application, the application for patent was
not made within twelve months from the date of the first application for protection for the
invention made in a convention country or in India;

(h) That the complete specification does not disclose or wrongly mentions the source and
geographical origin of biological material used for the invention; and

(i) That the invention was anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere.

CASES:-

1. Novartis AG vs. Natco Pharma Ltd14

An application for patent was filed in India on 17th July, 1998 by Novartis AG, Switzerland,
claiming Switzerland priority date of 18th July, 1997. Upon publication, the grant of patent was
opposed by Natco Pharma Ltd., India on 26th May, 2005. The grounds for opposition were:

• Anticipation by prior publication

• Lack of inventive step
• Non-patentability under section 3(d)

14
https://indiankanoon.org/doc/184497595/
 • Wrongfully claiming the priority

The title compound was already known in a US patent (filed in 1993).The US patent claimed a
pharmaceutically acceptable salt of the base compound. Another Document, "Nature Medicine"
(5th May, 1996) also described the title compound. Also, the claimed salt inherently existed in
the most stable form of the salt. Hence, the claims of the application for the product and process
in respect of the title compound stood anticipated by prior publications. Additionally, based on
section 3(d) the product claim amounted to a mere discovery of the new form of the known
substance. Further, the application had claimed Swiss priority, but Switzerland was not a
convention country on the date of filing in Switzerland. Hence, no priority of Swiss application
could be claimed in respect of the Indian application.

In view of the above findings and arguments the Controller ruled that the above patent
application cannot proceed for grant of patent.

2. Hindustan Lever Ltd. Vs. Godrej Soaps15

In another landmark case a patent filed by Hindustan Lever Ltd. on 14th Oct., 1992 in India was
opposed by Godrej Soaps Ltd. The patent had two priorities of UK dated 14th Oct, 1991 and
14th July, 1992 and was granted on 18th May, 1996 in India. The grounds of opposition were:

• Prior publication
• Prior public use and prior public knowledge
• Obviousness and lack of inventive step
• Non-patentability
• Insufficiency and clarity of description

The applicant has failed to disclose to the Controller the information required by section 8 or has
furnished the information which in any material particular was false to his knowledge After the
hearing it was concluded that the teachings of the cited exhibits were insufficient to prove the
grounds of opposition mentioned above. The applicant amended the claims and specifications to
make their point clear and to overcome the opponent's allegations. After considering notice of

15
https://www.casemine.com/judgement/in/56b48f24607dba348fff7029
opposition, statements and evidences from both of the parties and hearing, the opposition was
dismissed.
 BIBLIOGRAPHY

• https://www.lakshmisri.com/Uploads/MediaTypes/Documents/L&SWebsite_IPR_TopDi
sc_GunjanSharma.pdf.
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In-India-An-Overview.
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• https://indiankanoon.org/doc/801099/
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• https://ipab.gov.in/
• http://ipindia.nic.in/history-of-indian-patent-system.html.
• http://www.ipindia.nic.in/