QualPharma December 2020

PATENT AND TRADEMARK
Post grant opposition
The provisions of section 25(2) of the
Indian Patent (Amendment) Act 2005
governs the filing of a post grant opposition
by any ‘person interested’ after the
grant of the patent but before the expiry
of a period of one year from the date of
publication of grant of the patent, by way
of notice of opposition made in form 7
and sent to the controller in duplicate.
The Opposition may be made on any of
the grounds disclosed in section 25(2).
The "person interested" as per section 2
(1)(t) is defined as including a person
engaged in, or in promoting, research in
the same field as that to which the invention
relates.
On receiving the notice of opposition, the
controller constitutes an opposition
board, comprising three members, where
one of them is a chairman. The opposition
board conducts the examination of
the notice of opposition and the documents
filed under rules 57 to 60 and submit
its recommendations to the controller
within three months. Further a hearing is
scheduled between both parties by the
controller and decision for the patent to
be revoked, maintained
or amended is
taken.
It is to be noted that
the pre-grant opposition
under section 25
(1) is wider than the
post-grant opposition
under section 25(2),
as the latter allows
only ‘person interested’
to file the representation.
The
grounds of opposition for both the pre
grant and post grant oppositions are
similar.
Both Pre grant and Post grant opposition
can be made on the grounds listed below:
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 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.
QualPharma *Dec 2020* , Vol.3 ISSUE 12