Third parties can challenge the validity or patentability of a pending patent application or a previously issued patent through the process of filing a patent opposition.
The Indian patent law gives the general public the opportunity to file an opposition with the Indian patent office in order to contest pending patent applications and issued patents. There are two types of patent opposition processes under Indian law. A pre-grant and post-grant opposition are the two types of opposition that can be submitted before or after a patent is granted.
The Controller General of Patents hears the opposing party’s case in India. It is a major advantage of the Indian patent office’s opposition proceedings since the entire process is tightly time-bound, less expensive, and faster than litigation.
The Opposition Board
The opposition Board consists of technical experts in relevant fields of technology and is a statutory body established under section 25(3)(b) of the Indian Patents Act, 1970, as modified (the “Act”). An Objection Board must be established in order for the Controller to make a decision on the opposition after a grant has been made, and this report must be taken into consideration by the Controller. When it comes to post-grant opposition procedures, the Opposition Board’s most important role is to properly review all sides’ pleadings (arguments and evidence) before making a recommendation to the Controller. In accordance with the procedure that may be stipulated, every Opposition Board thus formed conducts examinations.
Constitution Of The Opposition Board
Section 25(3) states that the Controller must notify the patentee and form an Opposition Board by order in writing, consisting of such officers as he may determine, when any such notice of opposition is properly given under subsection (2) and refer such notice of opposition and the documents to that Board for examination and submission of its recommendation. The examination must be conducted in accordance with the prescribed procedure by every Opposition Board. (4) states that the Controller is required to order either the maintenance, amendment, or revocation of the patent upon receipt of the Opposition Board’s recommendation and after giving the patentee and the opponent an opportunity to be heard.
However, if the opposition is based on sub-section (2)(d) & (4), the Controller shall not take into account any personal document or secret trial or secret use while passing the order (e).
Additionally, Rule 56 of the Indian Patent Rules of 2003, as modified, (the “Rules”), deals with the formation of an Opposition Board and the procedure for post-grant opposition proceedings. The Controller shall form an Opposition Board of three members and nominate one of the members as the Board’s Chairman upon receipt of the opposition notification. Opposition Board members are not allowed to be examiners who dealt with the application during the patent award process. The Opposition Board examines the notice of opposition and any other papers submitted in accordance with Rules 57 to 60 of the Administrative Procedures Act (written statement, reply statement and evidence). Within three months of receiving the papers, the Board provides its joint recommendations/report to the Controller, which includes reasoning for each of the objections raised in the notice.
The Controller’s hearing method is outlined in Rule 62 of the Rules, which should be read in conjunction with Section 25(4) of the Act. After receiving the Opposition Board’s recommendations/report and hearing from both sides, the Controller will make a decision on the opposition and provide reasons based on those suggestions. Members of the Opposition Board may be required to attend the hearing by the Controller.
Significance of the Opposition Board
The Opposition Board’s recommendations/report must be based on the written statement of opposition, reply statement, and evidence presented by the parties, as stated in the Act and the Rules. The reasons for each of the claims made by the parties must be included in the recommendations. The report is then submitted to the Controller. He can’t completely disregard the recommendations before passing the order, even if they aren’t legally binding.
Depending on the circumstances, the Opposition Board may recommend that the patent be revoked for a variety of reasons, such as a lack of novelty or inventive steps, or it may say the patent is valid or that it requires revisions. These recommendations carry a lot of weight because they are made by technical experts who have examined all of the statements and evidence provided by the parties.
During a post-grant patent opposition case (Cipla Ltd. vs. Union of India & Ors.), the Supreme Court emphasized the importance of the Opposition Board’s recommendations. After ruling that the Opposition Board’s recommendations must be made available to the parties so that they can effectively present their arguments before the Controller at the hearing, the Supreme Court agreed. The Opposition Board and the Controller are not required by the Act or the Rules to provide a copy of the report to either party, but because the report is critical to the decision-making process, the principles of natural justice must be read into those provisions. Prior to passing an order, it is imperative that all parties have a copy of the Opposition Board’s report/recommendation available.
Examiners and other officers with technical expertise make recommendations and reports to an Opposition Board, one of its main advantages. Given that the Controller may not always be familiar with the technology at hand, this is extremely important. The Controller can more easily make a decision when provided with such in-depth expert advice about the validity of the patent.
According to the Indian Patent Act, 1970, it is stated under article section 25(3)(b) regarding the establishment of an opposition board. Furthermore, Article 25 (3) states in detail how the process is carried out. The constitution of the board and procedure for post grants are dealt with in Rule 56 of Indian Patent Rules.
The report by the Opposition Board is only recommendatory yet it does have a substantial persuasive value which may greatly influence the decision of the Controller.
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