Upload
bananaip-counsels
View
482
Download
0
Tags:
Embed Size (px)
Citation preview
Opposition and Revocation
★Opposition: Right to oppose grant of a patent
★Revocation: Request to revoke a granted patent
Patent Opposition
★Opportunity to public★Kinds- Pre-grant representation and
Post grant opposition★Pre grant representation to be filed
before grant★Post grant opposition to be filed
within 1 year from date of grant
Pre-grant Representation
★When: From 6 months after publication to grant
★Considered only after request for examination is filed
★Who can file? Any person★How: New Form 7(A) with evidence
Grounds
★Wrongful obtainment of right★Non-entitlement to apply for patent
protection★Previously published
★Publicly used★Prior claimed★Non-obvious or lacks inventive step★Non-enablement
★Non-patentable subject matter★Forms part of Traditional knowledge★Non disclosure or disclosure of
wrong information to patent office
★Source of Bio-material not disclosed or wrongly disclosed
★Non-adherence to important deadlines
★Contravention of secrecy laws
Process
★Publication of application★6 months later- filing of pre-grant
representation★Awaiting request for examination to
be filed
★Controller Review★Inform patent applicant, if relevant ★non extendable deadline to respond
★Hearing, if requested★Controller’s decision
Post Grant Opposition
★When: Strictly within 12 months after grant
★By whom: Person/Party interested★How: Notice of Opposition +
Evidence★Grounds: Same as Pre-grant
represenation
Process
★Within 12 months after grant★Controller to immediately inform
patentee★Patentee to file response
★Opponent to file response to patentees statement within 1 month
★Controller to appoint opposition board
★Opposition board to give report in 3 months
★Opportunity for hearing★Controller’s Decision
Revocation
★When: Any time after grant★By whom
○ Person/Party Interested○ Respondent in a suit for infringement○ Central Government
○ Controller - on instructions from Central Government
○ High Court
★Opponent to file response to patentees statement within 1 month
★Controller to appoint opposition board
★Person/Party Interested:
○ Grounds for revocation - same as opposition
○ Non-working of patent○ Surrender of patent rights
★Central Government○ Public interest○ Non-working of patents
★Controller - on directions from government○ patent relating to atomic energy
★High Court:○ Revocation for Government use
★Respondent: ○ Counter-claim
Why oppose or revoke?
★Public participation★Stringent grant standards★Avoid grant of frivolous patents★Alternative to litigation★Licence negotiation tactic★Delay tactic
Thank you