Chat with us, powered by LiveChat

+91-80-26860414

Call Us Today

LinkedIn

Search
 

Chapter 6 – Opposition Proceedings to Grant of Patents

BananaIP Counsels > The Patent Rules > Chapter 6 – Opposition Proceedings to Grant of Patents

Chapter 6 – Opposition Proceedings to Grant of Patents

55. Opposition to the patent.

 

(1) Representation for opposition under sub-section (1) of section 25 shall be filed in Form 7(A) at the appropriate office with a copy to the applicant, and shall include a statement and evidence, if any, in support of the representation and a request for hearing, if so desired.

 

(1A) notwithstanding anything contained in sub-rule (1), no patent shall be granted before the expiry of a period of six months from the date of publication of the application under section 11A.

 

(2) The Controller shall consider such representation only when a request for examination of the application has been filed.

 

(3) On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

 

(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent.

 

(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.

 

(6) [omitted]

 

55A. Filing of notice of opposition.

 

The notice of opposition to be given under sub- section (2) of section 25 shall be made in Form 7 and sent to the Controller in duplicate at the appropriate office.

 

56.Constitution of Opposition Board and its proceeding.

 

(1) on receipt of notice of opposition under rule 55A, the Controller shall, by order, constitute an Opposition Board consisting of three members and nominate one of the members as the Chairman of the Board.

 

(2) An examiner appointed under sub-section (2) of section 73 shall be eligible to be a member of the Opposition Board.

 

(3) The examiner, who has dealt with the application for patent during the proceeding for grant of patent thereon shall not be eligible as member of Opposition Board as specified in sub-rule (2) for that application.

 

(4) The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them.

 

 

57. Filing of written statement of opposition and evidence.

 

The opponent shall send a written statement in duplicate setting out the nature of the opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, along with notice of opposition and shall deliver to the patentee a copy of the statement and the evidence, if any.

 

 

58.Filing of reply statement and evidence.

 

(1) If the patentee desires to contest the opposition, he shall leave at the appropriate office a reply statement setting out fully the grounds upon which the opposition is contested and evidence, if any, in support of his case within a period of two months from the date of receipt of the copy of the written statement and Opponent’s evidence, if any by him under rule 57 and deliver to the opponent a copy thereof.

 

(2) If the patentee does not desire to contest or leave his reply and evidence within the period as specified in sub-rule (1), the patent shall be deemed to have been revoked.

 

59. Filing of reply evidence by opponent.

 

The opponent may, within one month from the date of delivery to him of a copy or the patentee’s reply statement and evidence under rule 58, leave at the appropriate office evidence in reply strictly confined to matters in the patentee’s evidence and shall deliver to the patentee a copy of such evidence.

 

60. Further evidence to be left with the leave of the Controller.

 

No further evidence shall be delivered by either party except with the leave or directions of the Controller:

Provided that such leave or direction is prayed before the Controller has fixed the hearing under rule 62.

 

 

61. Copies of documents to be supplied.

 

(1) Copies of all documents referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition and authenticated to the satisfaction of the Controller, shall be simultaneously furnished in duplicate unless the Controller otherwise directs.

 

(2)Where a specification or other document in a language other than English is referred to in the notice, statement or evidence, an attested translation thereof, in duplicate, in English shall be furnished along with such notice, statement or evidence, as the case may be.

 

 

 

62.Hearing.

 

(1) On the completion of the presentation of evidence, if any, and on receiving the recommendation of Opposition Board or at such other time as the Controller may think fit, he shall fix a date and time for the hearing of the opposition and shall give the parties not less than ten days’ notice of such hearing and may require members of Opposition Board to be present in the hearing.

 

(2) If either party to the proceeding desires to be heard, he shall inform the controller by a notice along with the fee as specified in the First Schedule.

 

(3) The Controller may refuse to hear any party who has not given notice under sub-rule (2).

 

(4) If either party intends to rely on any publication at the hearing not already mentioned in the notice, statement or evidence, he shall give to the other party and to the Controller not less than five days’ notice of his intention, together with details of such publication.

 

(5) After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Opposition Board, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.

 

 

63.Determination of costs. 

 

If the patentee notifies the Controller that he desires to withdraw the patent after notice of opposition is given, the Controller, depending on the merits of the case, may decide whether costs should be awarded to the opponent.

 

 

63A. Request made under section 26(1).

 

Request under section 26(1) shall be made on Form 12 within three months from the date of the order of the Controller and shall be accompanied by a statement setting out the facts upon which the petitioner relies and relief he claims.

 

 

64. & 65. [Omitted by Patents (Amendment) Rules, 2005]

 

66. Form of making a request under section 28(2).

 

A request under subsection (2) of section 28 shall be made in Form 8.

 

67. Form of making a claim under section 28(3).

 

(1) A claim under sub section (3) of section 28 shall be made in Form 8, and shall be accompanied by a statement setting out the circumstances under which the claim is made.

 

(2) A copy of the claim and the statement shall be sent by the Controller to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested.

 

 

68. Form of application to be made under section 28(7).

 

(1) An application under sub-section (7) of section 28 shall be made in Form 8 and shall be accompanied by a statement setting out the circumstances under which the application is made.

 

(2) A copy of the application and the statement shall be sent by the Controller to each patentee or the applicant for patent, as the case may be, and to any other person whom the Controller may consider to be interested.

 

 

69. Procedure for the hearing of claim or an application under section 28.

 

The procedure specified in rules 55A and 57 to 63 relating to the filing of notice of opposition, written statement, reply, statement, leaving evidence, hearing and cost shall, so far as may be, apply to the hearing of a claim or an application under section 28 as they apply to the opposition proceedings subject to the modification that reference to patentee shall be construed as the person making the claim, or an application, as the case may be.

 

 

70. Mention of inventor.

 

Any mention of the inventor under sub-section (1) of section 28 shall be made in the relevant documents in the following form namely:—

“The inventor of this invention/substantial part of this invention within the meaning of section 28 of the Patents Act, 1970, is…… …………….of…………. “.

 

Go to Previous Chapter

Go to Next Chapter