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Patent invalidation by way of opposition

By Gunjan Sharma

 Introduction

 In many jurisdictions around the world, lengthy and costly litigation proceedings are, in most cases, the only way by which a patent can be invalidated. The Patents Act, 1970 (hereafter referred as “the Act”), of India, however, includes provisions whereby a person/party, referred to as opponent, may oppose a patent application before grant of patent or may oppose a granted patent in the Patent Office itself. The opposition proceedings before the grant of a patent are usually referred to as pre-grant opposition and those after the grant are usually referred to as post-grant opposition. 

In India the pre-grant and post-grant opposition proceedings take place before the Controller General of Patents. The major advantage of initiating opposition proceedings in the Indian Patent Office is that it is time bound and so, the interested parties do not have to go through lengthy and tedious procedures in different courts, which may also involve considerable time till the matter is decided. The costs incurred in opposition are also minimal as compared to litigation costs.

From the Patent Office’s point of view, the pre-grant opposition provides additional information to the examiner, which helps prevent grant of a patent for an invention that does not fully comply with patentability or other procedural requirements. On the other hand, post-grant opposition prevents a party or a person from enjoying the monopoly of a patent that was wrongfully granted.
 
In this article, we will take a look at the grounds of opposition, the procedures to be followed for pre-grant and post-grant opposition, pros and cons of using opposition for invalidation, and some trends in filing of opposition cases. In addition to the Act, reference has been made to chapters 8 and 9 of the Manual of Patent Office Practice and Procedures (MPPP), version 01.11 dated 22nd March, 2011.

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[The author is an Associate, IPR Division, Lakshmikumaran & Sridharan, New Delhi]
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