The Indian patent system provides a unique opportunity to an individual or an organization to challenge their competitor’s pending patent applications or granted patents by way of filing patent oppositions. Such a provision helps them in opposing inventions that are undeserving, frivolous, or have been wrongfully obtained from them. A patent opposition can be divided into two stages – pre-grant and post-grant. During the early stage in a patent lifecycle, a pre-grant opposition can be filed by “any person” to prevent the grant of a patent. Whereas after the patent is granted, a post-grant opposition can be filed by “person interested” to revoke the granted patent.

However, it is important to note that these are time-barred activities. For instance, a pre-grant opposition can be filed any time after the patent application gets published, but before its grant. On the other hand, a post-grant opposition can be filed after the grant of a patent but before the expiry of one year from the date of publication of a granted patent by the Patent Office. The final decision in any opposition rests in the hands of the examiners at the Patent Office. So, filing an opposition can be considered as a business strategy to stop competitors from enjoying their monopoly rights and a way to contest the grant of an undeserving patent.

The following article discusses how Sagacious IP’s patent opposition strategy helped the client to challenge the grant of their competitor’s patent.

About the Client and their Challenge

Our client is an India-based company and registered as a “small entity” under the Micro, Small, and Medium Enterprises (MSME) Act. The company is involved in manufacturing defence-related products. Recently, they started working in association with the Government of India to cater to the needs of the Indian Army.

Sagacious IP has been offering its services to this company for the past two years. Recently, they leveraged our assistance to examine and challenge a few pending patent applications and granted patents which may cause legal hassles and financial loss to our client. They wanted us to thoroughly analyze the case and identify all the possible ways to stop their competitors who are working on a similar technology from getting patents in India.

Sagacious IP’s Solution

Our team understood the client’s requirements and formulated a legal strategy for drafting a pre-grant opposition against pending patent applications and a post-grant opposition against granted patents. Thereafter, our team of experienced patent agents and lawyers accumulated relevant documents to formulate the grounds for drafting oppositions. In the end, the team managed to file pre-grant and post-grant oppositions against all the relevant applications and patents along with evidentiary documents in support of the opposition.

The Impact

Our comprehensive arguments in the oppositions along with the evidentiary documents allowed our client to successfully present their legal interest before the Controller and Examiner at the Patent Office. This is because such patent applications could prevent our client from marketing similar technologies which may ultimately result in financial losses. Throughout this two-year relationship, Sagacious IP has not only helped the client to obtain patents in India and abroad but has also assisted them in challenging their competitors’ patent applications by way of filing pre and post grant oppositions. The average turnaround time for the project was 6-7 days with the active involvement of highly experienced patent agents, attorneys, and paralegals.

Final Thoughts

Individuals and companies are not only dominating the markets by filing patent applications but by also challenging their competitor’s patent applications. A patent opposition allows any third party to review the patentability criteria of an invention before it is granted, especially where the clients are aware that the grant of a patent that is similar to their technology may affect their business. In such cases, it is advisable to get legal assistance and oppose such applications in advance. Sagacious IP’s Patent Opposition serviceis specially designed to provide powerful insights before drafting and filing the pre-grant and post-grant oppositions in India. To know more about this service, click here.

-Richa Chaudhary (Registered Indian Patent Agent – Patent Drafting and Prosecution) and the Editorial Team

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