1. PATENT OPPOSITION AND STRATEGY Essenese Obhan, Obhan & Associates

2. Topics for Today’s Discussion  Patent Procedure and Rights of a Patentee  What is Opposition  Types of Opposition  Grounds of Opposition  Procedure  Strategies

3. Patent Procedure (insert chart)

4. 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.

5. Examination at the Patent Office Requirements under LawActual Examination 1. Novelty (not in public domain) Not published in any documentYes(?) Not used in India (or elsewhere in the world?)No Not orally known or disclosedNo Not traditional knowledgeNo 2. Inventive Stepnot complete 3. Patentable u/s 3 Not new form, new use, new property?not complete

6. 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?

7. Types Before Grant PRE GRANT Any person Within One year of grant POST GRANT “Person interested” Anytime after grant REVOCATION “Person interested”

8. “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

9. 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

10. Pre Grant  After Publication of patent application- Before Grant of Patent When? Patent Office where patent application was filed Where? No Fees Fees? No prescribed format. Format? If requested by opponent Hearing ? More representation than opposition Standard? No appeal Appeal?

11. Pre Grant Procedure 1 File representation including statement and evidence 2 Considered only after request for examination filed 3 Notice of representation and evidence sent to applicant 4 Applicant responds within three months 5 Hear the opponent if hearing requested 6 Patent refused, amended or granted

12. Post Grant After Publication of grant but within 1 year from publication of grant When? Patent Office where patent application was filed Where? Rs. 3000/12000 – including fees for attending hearing Fees? Prescribed Format Format? If requested by opponent Hearing ? Inter –se opposition proceedings with Controller having power of a Civil Court Standard? Appeal to the IPAB – within three months Appeal?

13. Post Grant Procedure 1 File Post Grant Opposition with evidence 2 Patentee to respond within 2 months 3 Opponent’s reply to patentee’s evidence 4 Opposition Board formed – 3 members 5 Recommendations received from Board 6 Hearings 7 Patent refused, amended or granted

14. Revocation After Publication of patent grant – throughout the term When? IPAB and HC if counter in an infringement Where? Rs. 5000 Fees? Prescribed Format Format? Inter se hearings Hearing ? Inter –se opposition proceedings at IPAB, Civil suit at the HC Standard? Appeal to the HC Appeal?

15. 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

16. 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

17. Thank you Q & A  Email@obhans.com  www.obhanandassociates.com