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Patent Opposition System in India: Grounds, Provisions and Current Scenario at Indian Patent Office (IPO)

Written by adminApril 9, 2020

Introduction

For invalidating a patent, there are time consuming and expensive patent litigation proceedings in various  jurisdictions around the world. Another way for invalidating a competitor’s patent application / granted patent can be through patent pre and post grant opposition  proceedings. That is, one may challenge a pending patent application (prior to grant) or after patent is granted. Indian Patent Act 1970 provides opposition provisions wherein a party (“opponent”) may oppose a patent application before grant of patent which is called “pre-grant opposition” and the oppositions which  are filed after the grant are called “post-grant opposition”.

Patent Opposition Provisions

In India, both oppositions (pre- grant and post-grant), proceedings takes place in front of Controller General of Patents, India. The main advantage of filing opposition proceedings in Indian Patent Office is that it is time-specific and therefore the interested parties/opponents need not to undergo time consuming expensive lengthy procedures as conducted in Courts. The involved cost in oppositions is also minimal as compared to litigation cost in Courts.

The pre-grant opposition provides detailed information to patent examiner which could  prevent grant of patent for ineligible patent matter which does not qualify either  patentability criteria or other procedural/ formality requirements as per Indian Patent Act. Further, in pre-grant proceedings, hearing is not mandatory, however, in post-grant proceedings, based on hearing, the controller takes decision for a patent.

Sections 25(1) and 25(2) of the Indian Patents Act 1970 discloses grounds for proceedings before the Controller General of Patents, India. The grounds for pre-grant and post-grant oppositions are almost same and there is no restriction for filing pre-grant opposition thereafter filing post-grant oppositions; however, there are few procedural differences between the two oppositions.

Pre-Grant Opposition

According to Patent Amendment Rules 2016, once a patent application gets published, any person can file a pre-grant opposition before grant of the patent by filing Form 7A (under Sec. 25(1)). There is no official fee for filing pre-grant opposition. One needs to file and submit written representation to the Controller of Patents including statement and evidence(s). The applicant is given three months to file a reply to representation from the receipt of notice from the Indian Patent Office.  Based on the representation submitted by opponent and reply submitted by the applicant, the controller may schedule hearing, if required. The Controller may either refuse or grant the patent application; or suggest requests for amendment of specifications/claims to the applicant after completion of opposition proceedings.

Post-Grant Opposition

Any interested person as defined under Section 25(2) of the Indian Patents Act, may file notice of opposition i.e. with prescribed Form 7 within one year from grant date which is mentioned in Patent Journal i.e. Date of Publication of Grant along with payment of prescribed official fee. The notice of opposition must disclose following items:

  • The nature of the opponent’s interest;
  • The facts under which opposition is done; and
  • The relief which the opponent seeks

Thereafter, patentee may challenge the opposition by filing a reply statement within two months from the receipt of the opposition notice. After that, the opponent may file further evidences within one month of receipt of reply by the patentee. In case where the patentee do not submit reply of opposition notice, then in absence of any reply by the patentee, the patent may be deemed to be revoked/ abandoned.

On receipt of a notice of opposition, the controller may thereafter form an opposition board, which further comprises of three members, including one chair member. The opposition board analyses the opposition facts, opposition statement in detail and then sends its recommendations to the controller within three months. Based on the recommendations of the opposition board, the controller takes his decision, however these recommendations are not binding opinion to the Controller, but if the controller is of opinion that is contrary to the recommendations of the opposition board, then the controller passes a reasoned order  which contains his or her analysis and detailed analysis. The controller may also schedule a hearing between both parties and takes a decision for the patent to be revoked, maintained or amended.

The final decision taken by the controller of patent related to regarding a pre-grant or post-grant opposition may be further appealed to the Intellectual Property Appellate Board (IPAB). The time limit for making such appeal is within three months of the date of the decision..

  • Grounds of Opposition:

Section 25 discloses various following grounds for opposition:

  • Lack of novelty (i.e, the invention was previously published in India or elsewhere, or was previously claimed in India i.e. anticipation by prior date, Prior claiming in India).
  • The invention formed part of the prior public knowledge or the prior public use or traditional knowledge of any community.
  • Obviousness and lack of inventive step i.e. the invention is obvious and lacks inventive step.
  • Ineligibility of invention (i.e., the subject of a claims does not constitute an invention within the meaning of the Patents Act or is not patentable under the act).
  • Failure to disclose information or furnishing false information relating to foreign applications filed by the applicant for the same or substantially the same.
  • Wrongfully obtaining the invention.
  • Insufficiency of description of the invention.
  • Non-disclosure of information as per the requirement or providing materially false information by an applicant.
  • 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.
  1. Statistics – Pre-Grant Patent Oppositions

The Annual Journal report issued by the Intellectual Property Office i.e.  Controller General of Patents, Designs, Trademarks and Geographical Indications office report 2018-19 reveals that a total number of patents  which were published under Section 11A were around 46899 during the reporting year (2018-19), while  number of pre-grant oppositions which were filed by the opponents was around only 260, that constitutes around 0.55% of the total published applications. Also, the below data reveals since 2013 to 2016 there has been considerable growth in the trend of count of pre-grant oppositions i.e. 0.98%, 0.91% and 0.69%, respectively.

Year Number of Patent Publication Number of Pre-grant Opposition Pre-grant opposition / Patent Application Publication (%)
2013-14 31413 309 0.98
2014-15 26934 247 0.91
2015-16 41752 290 0.69
2016-17 86766 206 0.23
2017-18 46899 260 0.55

 

   Source: http://www.ipindia.nic.in/annual-reports-ipo.htm

Conclusion

Based on the analysis done on available data captured by the Indian Patent Office’s online discloses that the major grounds on the basis of which both pre-grant and post-grant opposition were filed last year were “The invention constitutes non patentable subject matter” and  the “invention lack inventive step”. Also, the formality objection ground relating to Section 8 was also noticed extensively. In the pharmaceutical field, the grounds of opposition were related to the subject matter is non-patentable under Section 3 (d) of the Patents Act. Here, the opposing party is required to prove that the claimed compound is only a mere derivative of a known substance or claimed invention is new property or new use for a known substance or of the mere use of a known process, Such machine or apparatus as claimed unless such known process results in a new product or employs at least one new reactant.

India’s patent law provides provision for both pre-grant and post-grant opposition. This provides efficient and effective method for preventing or revoking the grant of a non-eligible patent. The provision of opposition proceedings also adds to the backlog of patent prosecution at IPO. These opposition also may delay in the grant of the patents. Furthermore, a pre-grant opponent may also file a post-grant opposition after the patent grant. The opponent may also file IPAB appeal if not satisfied by IPO decision.

For any query related to opposition system in India, please feel free to contact at info@effectualservices.com.

Authors:

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com

Jyoti Chauhan (Manager)  can be reached at jyoti.chauhan@effectualservices.com

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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EFFECTUAL SERVICES – BS Best Places to Work in 2019

Written by adminOctober 24, 2019

To foster innovation and creativity, intellectual property (IP) must be protected. Creations of the mind, such as names, symbols, new technological processes, etc. can be protected through patents, copyrights and trademarks. In an era of start-ups and unconventional career paths, an awareness of laws that protect intellectual property can go a long way in boosting the economy. The IP industry also plays an important role in keeping public interest in mind, while at the same time enabling organizations to profit from their ideas and innovations.

Effectual Services performs this very task of striking a balance. The organization has grown to become one of the most trusted partners offering IP support solutions to a number of companies. It has helped clients in generating ideas to produce sustainable solutions regarding patents and trademarks. It also offers high level strategic consulting services that helps mitigate risks in the decision making process.

Collaboration:

Effectual Services caters to clients from 22 countries across 5 continents, including 55 of the Fortune 500 companies, and offers support across various disciplines. The organization’s mission is to respect all stakeholders and encourage collaboration. It also works with several SME’s to protect their innovations from bigger sharks in the industry and ensure revenue gains.

Awards & Achievements:

Since its inception, Effectual Services is leading the IP industry, and has been recognized for its contributions.

  • Founder Amit Aggarwal have been listed in IAM Strategy 300: The World’s Leading IP Strategists 2019.
  • Awarded Deloitte India Technology Fast 50 Awards – 14th fastest growing company in India in 2014.
  • Awarded Deloitte Asia Pacific Fast 500 Awards – 124th fastest growing company in Asia Pacific in 2014.
  • Awarded Red Herring – Winner of Asia Top 100 Award in 2015.
  • Received “IP Excellence in India” in 2018 & 2019.
  • ISO 27001: 2013 – Information Security Certified.
  • Member of IFCCI since November 2017.
  • Member of IGCC since December 2017.
  • Member of IACC since March 2018.

Services

  • Patentability / Novelty Search
  • Invalidity Searches / Claim Charts
  • Clearance Searches
  • Patent Proofreading Services
  • Evidence of Use

Team:

Effectual Services consists of a team of driven, highly experienced employees who perform with excellence. The organization exudes trust, and has encouraged loyalty in its employees, many of whom have been working with the organization since its inception. Employees hold the organization’s mantra, “Client Centricity, Ethics & Integrity, Innovation & Integrity, Ownership, Respect & Collaboration” close to their hearts. A unique feature is the existence of “quality circles” who meet to discuss problems, and brainstorm solutions. The work culture is healthy with a democratic leadership style, where each one is encouraged to express their views and ideas, to grow both professionally and personally. A platform is also given to individuals to blow the whistle, ensuring complete transparency.

A special feature of the organization is its “Team Off Sites”, where people can bond and simultaneously break the monotony of their work life which leads to enhanced productivity. Thus the organization encourages freedom of expression and high levels of engagement in all its activities.

Founder:

Mr. Amit Aggarwal has 17+ years’ experience, and is focused on creating awareness of the industry in India, especially among students. Venturing into a relatively new industry was a brave risk. Building a team of 175+ analysts from scratch, and encouraging and informing parents and employees about the scope of a new industry has also been challenging. But, with democratic leadership, the organization has overcome every hurdle and has become a trail blazer. Ideas also had to be generated on expediting the training while maintaining employee effectiveness and mentoring students. Ensuring consultancy services are fact driven and result oriented has also added to the value of the company. Thus as a founder, Mr. Aggarwal’s vision and leadership has played a vital role in every decision taken by the organization.

The organization’s vision, “to be the most innovative business partner serving the knowledge economy, by attracting and nurturing the best global talent”, lays down the perfect road map to achieve its goals in the future.

CSR:

Effectual Services has organized social awareness sessions for employees, conducted drives on the environment and supports underprivileged children. Tie ups with NGO’s and orphanages also help the organization make a positive impact on society.

Future Ahead:        

The organization plans to expand to other locations, especially in Europe, Asia and Australia. It also plans to expand vertically by pairing up with like-minded organizations or investing in new business opportunities. It considers collaborations a significant aspect in expansion. Working with more Fortune 500 companies to help craft IP strategies, and also save SME’s from frivolous litigation by NPE’s is a key concern for the organization.

With utmost dedication and firm belief in the consultancy services they provide, Effectual Services has overcome several challenges and made a lasting impression in the IP industry, and continues to do so.

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As 5G, IoT Patent filings rise, litigations Go up too

Written by adminSeptember 12, 2019

Since India is becoming a hot-bed for IoT and 5G based filing, we may soon see a litigation war here too.

Internet of Things (IoT) represents a whole world of connected objects that talk to each other at a whirlwind speed that never falters. The applications and benefits of this niche technology are multifold as it has the potential to revolutionise the world that we live in.

Amit Aggarwal, co-founder and director of Effectual Services, an intellectual property (IP) management advisory firm, says: “According to tech experts, by the year 2020, IoT devices will generate data accounting to 5 quintillion bytes every day.” According to him, the tech world is rooting for 5G as the superpower for handling such extensive data as it has the potential to connect everything together. The key reason for bidding on 5G technology lies in “The Cloud”, where the massive amounts of data from IoT can be stored, processed, and fed back to users, he insists.

Artificial Intelligence (AI) has to be the brain digging through the pile of IoT data. AI has the ability to quickly deduce insights by automatically identifying patterns and detecting anomalies in the data that these smart devices generate. Gartner predicts that by 2022 more than 80% of enterprise IoT projects will include an AI component.

Aggarwal says, “Exploring the intellectual real estate, we observed that each of these technologies has significant patent filings of its own. For IoT patent filing, the key foreign corporates such as Samsung, Qualcomm, Nokia, Ericsson, LG, top the ladder. A few Indian origin companies such as Wipro, Tata Consultancy Services, HCL Technologies are also making it to the top list. The 5G patent filing activity also is in good shape with industry behemoths joining the race.”

Further, within AI, more than 300,000 patent applications have been filed, he says. For patent filings involving the integration of these domains—Samsung is filing multiple patents which involve using 5G network for IoT communication and AI implementation in IoT for smart home, health care, etc.

“This growing filing trend in these domains has also initiated a litigation war worldwide. Litigation studies show that during 2013-18, the cumulative number of IoT-litigated patents witnessed an increase of more than 400%, with a sharp spike from 2017 to 2018,” he informs. Further, patent assertion entities (PAEs) are acquiring IoT, 5G and AI patents, which they will likely monetise, assert and litigate over the coming years.

“Based on our analysis, we expect to see an increasing number of patent litigation as 5G inches closer to seeing the light of the world. Since India is also becoming a hot-bed for IoT and 5G based filing, it might soon find its troops marching towards the litigation war,” he summarises.

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Patent filing Procedure in US

Written by adminSeptember 12, 2019

US Patent and Trademark Office (USPTO) is one of the oldest patent offices in the world. For obtaining a Patent, two types of patent applications can be filed:

  • Provisional:- It is a quick and less expensive means of filing application however, it only survives when a regular non-provisional patent application within one year is filed.
  • Non provisional/Complete:- It is the final application on the basis of which the patent is granted after being examined by a patent examiner.

Also there are 2 types of patent applications in US- Design patent, Utility patent

1) Preparing a patent application

The first thing in patenting of the invention is preparing a patent application.  There may be different requirements which may be complied depending on it is design patent or it is utility patent. The requirements may be complied and written description, claims and drawings are drafted carefully.

There should be effective communication between the inventor and the person who may be drafting patent specification. The patent application should disclose al relevant details. It should meet § 112 enablement and also it should meet best mode for carrying invention.

Another important step in preparing a patent application is identifying true inventors who contributed claims of an invention in actual sense.

2) Filing

Filing of Non Provisional Application

Although a non provisional utility patent application can be filed through the Office’s electronic filing system called EFS-Web, delivery by U.S. mail, or hand delivery to the Office in Alexandria, Virginia. However, if the application is filed via mail or hand delivery, it would incur extra payment of $400 called “non-electronic filing fee” subject to certain exceptions.

Filing of Provisional Application

A Provisional Application is not require to have a formal patent claim, an oath or declaration, and information disclosure statements as such application are not examined. It is helpful in establishing an early effective filing date in a later filed non provisional patent application filed. Corresponding non provision application has to be filed within 12 month of the filing of the application of provisional application.

The non-provisional utility patent application will be along with transmittal forms and application data sheets. The filing receipts is issued by USPTO (United States Patent and Trademark Office)

The patent filing fee may vary according to the size of the application, claim no.s, whether it is paper-filing or electronic and whether the applicant is a small entity or company etc.  The filing fees may be reduced in half for small entities.  A small entity is an individual, a small business (500 or fewer employees) or a non-profit organization subject to certain limitations.  The filing fees may be in the range of $1,000, or $500 for small entities.

3) Publication of Patent Applications

Publication is done after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. After the publication, applicant gets the provisional rights.

4) PROSECUTING APPLICATION-Examination of Applications and Proceedings in the USPTO

In the examination, the concerned application is tested on the parameters of patentability, its compliance with the legal requirements and if such application satisfies a patent is granted. At the time of examination, the Patent Office will issue the Examination Report (FER) / Office Action with a set of objections/requirements response to which must be filed within at least 2 months from the date of issue of the FER. The patent attorney may file response no later than 6 months after the date of the First Office Action.  Patent Examiner will set “shortened statutory period” to respond, which is usually 3 months for an Office Action. The shortened statutory period is the time in which you can respond without having to pay a fee to respond. You can respond up to 6 months but only if you request AND pay for an extension.

After prosecution is over, one can accept some claims which are allowed, or all being rejected or all being allowed. In many situations, few claims will be allowed and few may be rejected. There is also another provision of “Request for Continuing Examination (RCE)” where the prosecution gets restarted.

5) ALLOWANCE

United States Patent and Trademark Office(USPTO) access the patentability aspects of invention and if found patentable, it sends a Notice of Allowance to the applicant.  It may include requirements to be met by the applicant before the patent gets issued, but the requirements are more formalities rather than substantive requirements. In response to notice of allowance, the applicant do correct formalities and pay the issue fee accordingly.  The issue fee is reduced in half for small entities.

6) ISSUANCE

Once USPTO receives issue fee, it assigns a patent no. to the patent application and the same application in published in official gazette being published weekly.

7) MAINTENANCE/Annuities

Annuity for 3’rd year onwards is to be paid after grant of the Patent. Protection of the Patent is for 20 years from the International Filing Date.  The maintenance fees are not applicable for Design patents.  The maintenance fees are due 3.5, 7.5 and 11.5 years from the date of filing of original patent grant. The maintenance/annuity fees are reduced in half for small entities.

If you have any doubts or questions about the patent process in US, feel free reach out at Info@effectualservices.com

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How to research a patent idea by performing novelty invention search?

Written by adminSeptember 11, 2019

How to carry out research on patentable idea?

A novelty patent search is performed to analyse whether your idea/ technology / invention is new or not.  The patent search novelty report provided by the patent expert will tell you whether your invention is novel or not. The search report will include list of selected granted patents, published patents and non-patent literature which will become prior art existing for your technology. The patent search report will also contain legal expert opinion on the novelty of your invention. Our patent lawyers and attorneys assist in re-engineering your invention in the light of prior art documents

How can Patent Search help in determining Patentability of Invention?

Before spending time, money and resources for filing a patent application, it is strongly advisable to conduct a patent search . A qualified patent attorney can determine patentability of an invention by analysing relevant prior art references (published patent applications, granted patents and non-patent literature) in accordance with patent laws of relevant jurisdictions.

Patent Search before Filing A Patent Application 

While conducting a prior art search and performing patentability analysis, patent attorneys ensure that the search is comprehensive and corresponding analysis is thorough to include all possible embodiments of the proposed invention. Generally, the patent search results are compiled in the form of a detailed document known as patent search report. The patent search report further helps in writing a draft specification for patent.

 

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Patent Filing Process in Canada

Written by adminJune 13, 2019

Canadian Intellectual Property Office, commonly known as CIPO, is the controlling body for Patents and Trademarks in Canada. CIPO has been making a continuous effort to cut down the prosecution time to make the process of getting the Patent Application granted much faster. Currently, it takes nearly around 80 months for a Patent Application to be granted from the date of filing. It is still on a higher side when compared to the timelines of other countries like United States, Europe, India, and many other countries.
If we talk about the process for filing a Patent Application in Canada, it can be understood as described below:

Step 1: Filing of Patent Application:
Filing of a Provisional / Complete Application is done in English / French Language. In case of filing of a Provisional Application, Complete Application needs to be filed within 12 months of filing date / priority date (whichever is earlier).

Step 2: Publication:
Publication of the Complete Application is done in the Patent Journal within the 18 months of the filing date / priority date. However, the applicant can also opt for expedited publication for which an additional fee needs to be paid at the time of filing the complete application.

Step 3: Examination:
Examination of the Patent Application is carried out by the Examiner to evaluate the Patent Application on the grounds of the patentability criteria’s. The application comes to examination of the Patent Office (CIPO) as soon as the applicant submits the Request for Examination (RFE) that has to be submitted within 60 months of the filing date / priority date after the publication of the Patent Application.

Step 4: Prosecution:
Based on the examination conducted by the examiner and issues Objection Report which is also known as Office Action / Examination Report. If not satisfied with the response of First Examination Report (FER), the examiner can issue Second Examination Report (SER) or can also call for a face to face hearing. The consolidated time for this overall process is 90 days from the date of issuance of FER.

Step 5: Payment of Annuities:
Upon the grant of the Patent Application, annuities are supposed to be paid by the applicant to the Patent Office after second year onwards the grant till the tenure of the patent protection which is 20 years from the filing date / priority date.

Effectual Services has experience in dealing with Patent Filing/Prosecution as per Canadian Patent Filings, and can assist in hand-holding through the complete prosecution lifecycle of a Patent. Our patent filing procedure is in compliance to CIPO’s guidelines.
If you have any doubts or questions about the patent process in Canada, feel free reach out at Info@effectualservices.com

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HOW TO PROTECT YOUR INVENTION IN FOREIGN COUNTRIES?

Written by adminSeptember 11, 2018

Like any other Intellectual Property Right, Patent also is territorial in nature. Granted patent of one country cannot give protection in any other country other than the one it is granted in. The only option to protect any invention in foreign countries is to have a granted patent in those countries. It is again a lengthy and an expensive process to apply for a patent in different countries separately. But like trademarks, there are certain treaties and conventions to make it a little easier for the applicant to protect his/her invention in foreign countries.

The following are the treaties and conventions:

  • PARIS CONVENTION: In the case of trademarks, Paris Convention confers on applicants a Right to Priority which says a person applying for a trademark under Paris Convention gets a Right to Priority in all the member countries at the time of registration. Same way this right is given to the patents also. A person applying for a patent under Paris Convention can get a priority right in the member countries to apply but with a grace period of one year in case of utility patent and a period of six months for a design patent.
  • TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS): Under the Paris Convention, only member countries get the luxury of grace period, and non-members of the Paris Convention get the same luxury under TRIPS agreement provided they are the members of the World Trade Organisation (WTO).
  • PATENT COOPERATION TREATY (PCT): Under PCT also, an applicant gets only a grace period to apply in different countries but under this, the period is a little longer, it gives a total of 30 months grace period to the applicant to apply in different nations.

Under the Patent Cooperation Treaty, a person files for a patent and opts for an international search by International Search Authority (ISA) which does a search and issues a search report along with a non-binding written opinion to the respective patent office. The respective patent office later publishes the invention approximately after 18 months of priority date. After which, an applicant has a choice to apply in multiple nations within a 30 month period. Later, the respective countries will carry on their respective patent grant procedures to grant a patent. The most important point to be noted is that a PCT application does not guarantee a patent to be granted in the countries that they have applied for but only assures a priority right.

From the above discussion, we may understand that it is not possible to get a patent protected in multiple nations with a single application but can only get a priority right. Since India is a member of all the above-mentioned treaties, an applicant from India can apply under any of them to get his/her patent registered in multiple nations.

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Patent Opposition in India

Written by adminAugust 29, 2018

The Patents Amendment Act, 2005 provided for an integrated opposition system in India which allows both Pre and Post-grant opposition of a patent so as to ensure the quality and validity of granted patents.

Though the grounds for both pre and post-grant opposition are same, there are various differences regarding proceedings between the two systems. While ‘any person’ can represent in writing for pre-grant opposition, only the ‘interested person’ explaining specific interest can file a post-grant opposition. Another important difference being that in case of pre-grant opposition the act does not unequivocally provides the patent applicant the opportunity to be heard. Additionally, in pre-grant opposition there is no remedy provided by the act against the decision of the controller.
The grounds for opposition listed in the act primarily includes: (a) Wrongful obtaining of the invention (b) lack of novelty (c) prior public knowledge or public use (d) Invention is not patentable (e) Invention is anticipation having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere etc.

Pre-Grant opposition 
The pre-grant opposition is made by way of ‘representation’ to the Controller of Patents any time after the publication of the application but before grant supported by a statement and evidence, if any, along with a request for hearing if so desired. However, the Controller shall consider such representation only when a request for examination of the application has been filed. On consideration, if the Controller is of the opinion that the application for patent should be refused or requires amendment, he gives a notice to the applicant to which applicant has to reply within three months time from the date of the notice. After considering the representation, submission and hearing the parties (if requested), the controller simultaneously either rejects the representation and grant the patent or accept the representation and refuse the grant of patent ordinarily within one month from the date of completion of the proceedings.

Post Grant opposition 
The post grant opposition is made by ‘notice of opposition’ by the opponent within one year from the date of publication of grant in prescribed form to the Controller along with a written statement setting out the nature of his/her interest, the facts on which he/she bases his/her case, the relief that he/she seeks and evidence (if any) and providing a copy thereof to the patentee also. Upon receiving the notice, the Controller constitutes an ‘Opposition Board’ consisting of three members and one of the members nominated as Chairman. The examiner who has dealt with the patent application at the time of the grant is disqualified from being a member. The Opposition Board examines the notice of opposition and forward a report within a period of three months from the date on which the documents were forwarded to it.

If the patentee desires to contest the notice of opposition, he/she leaves the reply statement setting out fully the grounds upon which the opposition is contested and evidence within a period of two months from the date of receipt of the opponent’s written statement and notice and also delivers to the opponent a copy thereof. The opponent may within a period of one month of the receipt of the patentee’s reply statement and evidence leave evidence at patent office strictly in reply confined to matters in the patentee’s evidence with a copy thereof to patentee as well. After this no further evidence can be delivered by either party except with the leave of the Controller. On completion of presentation of evidence and after receiving the recommendations of Opposition Board, the Controller shall fix a date for hearing and give the parties a notice of not less than 10 days of such hearing. If either of the party desires to be heard, it gives a notice along with the prescribed fee to the Controller and after hearing both the parties, controller notifies his decision with reasons therefor.

Conclusion
The new integrated opposition system in India has suitably addressed the post TRIPS concerns of the generic pharmaceutical industry regarding the increase in the number of grant of many false patents. However, the patent applicants are now at the risk of multiple pre-grant oppositions filed by the competitors as a part of their business strategy resulting in constant and repeated opposition proceedings and thus causing a delay in the grant of the patent. Furthermore, a pre-grant opponent may subsequently file a post-grant opposition after the patent grant thus complicating the scenario for the patent applicant. On the other hand, Post grant opposition has been well acknowledged as its proceeding serves the interests of both patent applicant and opponent.

 

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Life Cycle of a Patent

Written by adminAugust 29, 2018

A patent issued for an invention allows exclusive rights of the invention. In order to be eligible for a patent, the invention has to possess new characteristics and not be apparent for an average expertise. Patenting your invention prevents other people, your competitors, from producing, utilizing, selling or offering to sell the patented item/method within the boundaries of the country, or import it into the country. As the patent owner, you can dispose of your invention by selling the patent, patent right – entirely or partially, as well as license the use of it.

Patenting Process: The process begins with the filing of a patent application and ends with the rejection or issuance of a granted patent. The process starts as soon as an idea is conceived.

Conception of an Idea: The first thing to remember is that one cannot patent an idea. The idea or concept needs to be put together as an invention. The idea and invention together form what the law calls conception. The conception date is important since it can be utilized to argue against prior art cited by the US Patent and Trademark Office (USPTO).

If two or more patent applicants file separate patent applications at the Patent Office for the same invention, the Patent Office conducts what is called “interference.” The conception date is important when interference is initiated to prove which inventor was the first to create the invention. Interference is basically a mini-trial to determine which inventor invented first and is thus entitled to the patent. Like trials in court, evidence is what wins the day. Detailed records are evidence that the inventor was diligent in developing the invention. One need not have a prototype built in order to get a patent, but should be able to describe the invention with enough clarity so that someone who is technically skilled in the art can understand how to make and use the invention.

After conception of an idea and diligently recording it one should move further trying to finalize the invention. This process is called as reduction to practice. Reduction to practice, therefore, can occur through the creation of a prototype or the specific definition of the invention in writing in a filled patent application.

First to Invent and First to File: U.S. patent law stands apart from the rest of the world: it alone adheres to a “first-to-invent” system, which allows an inventor to assert first-inventor rights and claim priority back to the date when the invention was first conceived. Thus, in a priority contest between competing inventors, the inventors’ dates of conception and reduction-to-practice take precedence over their application filing dates. Almost every other country in the world has a patent system based on the “First-to-File” doctrine, in which the patent is granted to the inventor who is the first to file a patent application, regardless of the date of invention.

Patentability (Novelty or prior art) Search (Optional): Patentability searches are performed before applying for a patent to assure an invention is patentable. A patentability search examines granted and published applications of major patent offices as well as domain-relevant non-patent literature. A Patentability Search answers the following questions:

  • Is my idea or invention novel?
  • Has it been patented earlier or given the scope of patentability, is it worth the cost of filing a patent?
  • Is it worth the effort and expense to fully develop and market your concept?

Patent Drafting and Filing the patent application

Filing a Provisional Patent Application: After the patent search stage if the applicant decides to move forward then applicant can either file a provisional or a non-provisional patent application. In situations where all the details of the invention are not available, applicant can consider filing a provisional patent application. The provisional patent application may include the basic idea of the invention. It is not required to provide the patent application according to the Patent Office patent application guidelines.

Filing a Non provisional Patent Application: In order for the patent prosecution process to begin, a non-provisional patent application must be filed within one year of filing a provisional application. A non provisional patent application is the application you file when you want the Patent Office to review the filing and proceed toward issuing a utility patent application. A complete patent application includes a specification describing the invention, including any necessary drawings, an oath by the inventors, claims legally defining the scope of the invention, and an appropriate filing fee. In case the non provisional patent application submitted is in complete, the applicant will receive either a Notice of Missing Parts or a Notice of Omitted Items. The Notice of Missing parts awards a filing date and explains what must be submitted and by when, and includes any fee (i.e., penalty) due for the privilege of this later filing. With respect to the Notice of Omitted Items, such a notice explains that you have referred to something in the application that was not included in the original filing.

Patent Publication: The U.S. Patent Office will treat any non-provisional patent application as confidential until the patent application is published. This usually happens 18 months after filing the application. The eighteen-month publication provisions apply to divisional, continuations, continuation in part, and international applications entering the national phase in the US. For a fee, the publication can be moved to either an earlier or later date depending on the desire of the inventor.

Non Publication Request: A non publication request prevents an application from being published until the application issues as a granted patent. An applicant can avoid publication by certifying in a formal non-publication request that it is not planning to file a parallel application in a foreign country that has an 18-month publication requirement. This is beneficial to an applicant because they are able to keep the information confidential if they don’t obtain a patent. If the applicant is confused between protecting the information as a trade secret or as a patent, and if a patent is ultimately not granted, the applicant can still keep the information as a trade secret. If a non-publication request is made and the applicant subsequently decides to file a parallel foreign application subject to an 18-month publication requirement, the applicant must notify the Patent Office within forty-five days after the date of foreign filing or risk abandonment of the application.

Patent Examination and Office Action:The examiner may first check the number of inventions claimed in the application. According to USPTO, there can only be one invention claimed in a single patent. If the examiner determines that there is more than one claimed invention in the application, the examiner will request the inventor to restrict the application to only one. The inventor may then file a separate (divisional or continuation or continuation in parts) application while still keeping the original filing date.

After resolving this, the examiner may review the application to determine if the claimed invention is patentable.

After the examiner has examined the application, examiner sends an Office Action to the applicant. The office action cites prior art and gives reasons why the examiner has allowed, or approved, the applicant’s claims, and/or rejected the claims. There are several types of Office actions: examiner’s amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters. The applicant must respond to each Office Action within 3 months from the Office Action date. 3 months extension can be granted by paying additional fee.

There can be a series of office actions before the examiner makes the rejections final. There is still an opportunity to amend and make changes. In order to continue examination of the application one can cancel claims, place claims in better condition for appeal, or amend the claims as per suggestion of the Examiner that would make a claim patentable.

Request for Continuing Examination: On receiving a final rejection the applicant may file a Request for Continuing Examination (RCE). This RCE will restart prosecution and the amended claims are examined just as if they were being presented for the first time in a newly filed application.

If you choose to have the allowed claims issue you can choose to file a Continuation or a Continuation in Part, which will allow for you to continue to try and persuade the patent examiner that certain claims are allowable. Both Continuations and Continuations in Part start a new application process from the beginning, as opposed to the RCE which continues forward on the same application.

Appeal: Along the way a decision can be made to appeal a Final Rejection by the examiner. Such an appeal goes to the Board of Patent Appeals (BPAI), and perhaps ultimately to the United States Court of Appeals for the Federal Circuit, or the United States District Court for the District of Columbia.

Allowance and Grant of Patent: After the examination of the application or at a later stage during the reconsideration of the application, if the patent application is found to be allowable, a Notice of Allowance is issued by the Patent Office to grant you a patent. Issue fees are drawn generally within three months of the Notice of Allowance. The issued fee must be paid after you get that Notice of Allowance and the patent will be published and issued several months later when it is printed with a patent number in the official gazette and published in the USPTO website.

Patent Term and fees: A granted patent will expire after 20 years of the filing date, unless it expires earlier due to a failure to pay fees or a declaration of invalidity by a court. After the patent expires, the invention is available to all. Design patents, unlike utility patents, have a term of 14 years from the date of issue. If the patent office takes longer than three years to examine and grant a patent, the term of the patent may be adjusted accordingly.

There are three patent maintenance fee payments that must be made during the life of your patent to keep it in force. Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the patent. No maintenance fees are due while an application is pending. Design patents and plant patents are not subject to maintenance fees at all.

 

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Suggestions and Discussions about Patent Related Issues

Written by adminApril 6, 2018

In this article we are going to clear certain doubts and find answers about patents and their related issues with Intellectual Property. Here, we are providing an open discussion forum where you can clear all your doubts about patents and patenting a new invention. If you are new to patents and its related issues, then you can certainly clarify any doubts you might have about legal patents. Therefore, we have prepared a questionnaire to eliminate all possible confusions:

Q1: Define the term “Patent”?
Patent is an exclusive monopoly that is granted by the government in various countries for an inventor over his invention for a defined time period. Patent is basically a legal document that covers new inventions and protects the idea of the inventors by operating various claims.

Q2: What types of inventions can be included for patenting?
The inventions that can be included must be of practical use; they must display the aspect of novelty, and have some attribute which is not known in the body of existing knowledge in the technical field. In many countries, the scientific theories, mathematical procedures, plant or animal invention types, discovering natural elements, commercial methods and the methods of medical treatment and software programs are not patentable.

Q3: Difference between patents and exclusivity?
Both patents and exclusivity work in the same way but are distinctively different from each other. Patents are authorized by the patent and trademark office anywhere in the development lifeline of the drug and comprises of wide range of claims.

Q4: What type of protection does a patent offer?
Patent protection refers to the inventions which cannot be created commercially, nor can be used, distributed or sold without the owner’s permission. If any individual or any organization wants to use that particular invention, then they may need to purchase the rights or pay royalty to the owner.

Q5: Who can access the rights of patents?
The inventor or the company accredited by the inventor can access the rights of patents.

Q6: How can a patent application get filed?
The inventor or the beneficiary can acquire the patent by filing an application in the patent office in designated forms as required by the act of that particular country.

Q7: Can an applicant get this right for any other individual inventions?
Of course, a person assigned by the inventor can easily acquire the rights for that invention. The original owner is the assigned person but the name of the inventor is present in the inventor’s column. If any person tries to claim the right for an invention without the knowledge of the inventor, then that will be termed as illegal.

Q8: How many inventors can jointly file a single application?
If it is invented by a group of people or a team, then they can certainly file a joint application for that particular invention.

Q9: Why are patent rights important for any inventor?
If an inventor does not avail his rights for his invention and introduces the product based on his invention in the market, then anyone can easily duplicate his invention and exploit the product commercially. The patent rights are important to debar other people from using or selling the product without the consent of the inventor. Therefore it is recommended to claim legal rights for the invention.

Q10: Who has the right to check the novelty feature of that invention?
An examiner of the country office checks the novelty feature of the application with the current state of art available at that time.
Basic questions about patents and patent related issues have been clarified in the above mentioned 10 questions. If you have more doubts about the same, please don’t hesitate to drop your queries in our comment box. We will respond shortly!

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