PATENT OPPOSITION AND REVOCATION

National and regional laws provide legal methods for opposition and other administrative revocation and invalidation, allowing third parties to intervene in the patent examination process prior to award or to challenge a patent post-grant. It is said that “if you want to protect your invention, you must get it patented first”. But very few know that there are various hurdles and opposition in getting one. These hurdles can be faced before or after the grant of a patent.

Opposition of a patent

The opposition of a patent is a legal process that allows third parties to challenge the validity of a granted patent within a specified timeline, generally after the patent has been granted. The primary objective of this is to ensure that patents are awarded only for inventions that meet the legal criteria of patentability which includes novelty, inventive step, and industrial applicability. There are two kind of oppositions:-

Pre-grant opposition: As the phrase already mentions ‘pre’ means any opposition that arises before the patent is granted. In layman language, it will be objecting to the patent before it is granted. Any individual may challenge the award of a patent, and such opposition must be filed after an application for a patent has been published and prior to the issuance of the patent.

Post grant opposition- It states that when a patent has been granted, any interested party may file a notice of opposition with the Controller, but such opposition must be filed within one year of the date of publication of the patent award. The grounds for post-grant opposition are the same as pre-grant opposition.

The post-grant opposition can be filed only within a year of the publication date. It is clear that if no resistance is raised in the specified year, the patent will be awarded to the applicant.

Grounds for objection in opposition are-

• The applicant has obtained the invention wrongfully
• The application has been anticipated by prior publication
• The claimed invention is obvious and does not include any creative steps.
• The full specification of the invention is not disclose
• When there is a conventional application, the applicant must file the application within twelve months of the date of the first application for protection for the invention in a conventional nation; failure to do so will be grounds for pre-grant objection.
• The applicant either submits false information about the source or geographical origin of biological material or fails to disclose it fully.
• The claimed innovation is anticipated wherever in the globe with relation to any community's traditional knowledge.

Revocation of patents

Revocation is the act of taking back something previously granted or has been already granted. Since a patent is not permanent, any person other than the patent holder has the right to file a revocation petition if they have a problem with someone else's patent right. The term ‘any person’ relates to any interested party with legally valid reasons for revocation of the patent, as well as the central government.

Administrative revocation, also known as post-grant review or re-examination, is a procedure through which the validity of a patent can be reviewed and potentially revoked after it has been granted. This process can be initiated either by a third party or by the patent office itself and is conducted by the same office that granted the patent.

Grounds for revocation of patents-

• Revocation takes place only when there are grounds to challenge or disagree with a patent.
• If an identical innovation has previously been protected by a patent with an earlier filing date.
• If the patent has been granted by deception or fraud and any individual is not an original patent owner
• If an invention lacks novelty due to past public use or knowledge, the patent may be withdrawn.
• The inventor is required to disclose the geographical origin or source of the biological material employed in the invention; failure to disclose them may result in revocation of the patent.

In the European Patent Office (EPO) system, the time period for opposition is nine months from the date on which the granted patent is published in the European Patent Bulletin. In this duration, any person can file an opposition except the patent owner. The main causes for opposition under the EPO system include:

1. If the invention was already known to the public before the date of filing of patent, then it leads into Lack of Novelty in the invention.
2. If there is obviousness in an invention to a person who is skilled in the art, then it leads to Lack of Inventive Step
3. If the invention cannot be used commercially in any kind of industry, then it lacks Industrial Applicability.
4. If a skilled person is unable to carry out the invention due to inadequate disclosure in the patent, then there in Insufficient Disclosure in the invention.
5. If the subject matter of the patent goes beyond what was initially disclosed in the application, then it can be extended through Extension of Subject Matter.

In the United States, the United States Patent and Trademark Office (USPTO) provide mechanisms for administrative revocation, such as ex parte re-examination and inter partes review (IPR).

1. Ex Parte Reexamination: Based on prior art, such as patents or printed publications, anybody, including the patent owner, may ask the USPTO to reexamine a granted patent. After the first request is filed, a patent examiner conducts the re-examination without the requester's involvement.
2. Inter Partes Review (IPR): A third party may contest the legality of a patent through this more adversarial procedure by pointing to earlier works of art. Both the patent owner and the challenger are parties to the IPR proceedings, which are heard before the Patent Trial and Appeal Board (PTAB). The goal of administrative revocation and opposition procedures is to guarantee that patents are only maintained if they actually satisfy the legal conditions for patentability. These procedures offer an economical

Conclusion

In our world full of inventions, the concept of "stealing others' ideas" is quite common.As a result, eliminating pre-grant and post-grant opposition throughout the patent process would be unwise, as these oppositions have averted numerous false patents. The law, including the Patent Act, seeks to serve the public by allowing individuals and the government to challenge patents that are potentially damaging or improper.

Author by:- Shilpi Jain (AVP-Global Filings)) & Vaishali Gupta (Patent Paralegal Trainee)