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PATENT OPPOSITION AND STRATEGY
Essenese Obhan, Obhan & Associates
Topics for Today’s Discussion Patent Procedure and Rights of a
Patentee What is Opposition Types of Opposition Grounds of Opposition Procedure Strategies
Patent Procedure (insert chart)
Rights of Patentee
Can institute infringement proceedings only post grant
Can claim damages from date of publication of application
If application amended after publication – must show good faith to claim damages.
Examination at the Patent OfficeRequirements under Law Actual
Examination1. Novelty (not in public domain)
Not published in any document Yes(?)
Not used in India (or elsewhere in the world?)
No
Not orally known or disclosed No
Not traditional knowledge No
2. Inventive Step not complete
3. Patentable u/s 3
Not new form, new use, new property? not complete
What is Opposition?
Third party objection to a grant of a patent
Reasons for opposition Raise the examination standard Prevent competitors from obtaining frivolous
patents Prevent surprises Avoid costly litigation Reduce/Avoid Damages Negotiate favorable licenses?
Types
“Person Interested”
person engaged in or promoting research in that field
Possession of patents related to the same matter Manufacturing interest Trading interest –
interest must be real, definite and substantial, and must not arise from what the opponent proposes to do. Thus mere possession of an article covered by the patent is not enough.
Financial interest Specification contains statements that are
injurious to the opponent
Grounds for opposition
Not Novel
Not Inventive
Not Patentable
Non Disclosure
Insufficiency
Wrongful Obtaining
Traditional or oral
knowledge
Publicly known or
Used
False Convention
claim
Pre Grant
Pre Grant Procedure
Post Grant
Post Grant Procedure
Revocation
Why pre grant should never be missed Free
Simple Procedure
Easier to prevent grant than to revoke grant
Avoids damages if good faith argument used
Puts the patentee on a back foot before grant
Suggested Strategies
Determine internal policy
Set up a patent watch group within the organization Keep ready list of known competitors/patents Identify potentially troublesome patents Prepare frame work of objections in advance
Maximize use of pre – grant
