An Evaluation of the Indian Legislative Framework for Patent Opposition Mechanism : Merits and Demerits of the Procedural Safeguard

Patent opposition refers to the ways in which it is possible to challenge the validity of a patent both during the pendency of a patent application and after the grant of a patent. Patent opposition proceedings provide the first opportunity for third parties to challenge the validity of patents. These are in-house proceedings because they are instituted within the Patent Office. Since 2005, India has provided a detailed legislative framework for challenging the validity of patents in a cost-effective manner. Patent opposition proceedings provided under the Patents Act can be classified into two distinct categories: pre-grant opposition (before the patent is granted) and post-grant opposition (after the patent is granted). This study supports India’s decision to provide a less formal ex-parte pre-grant opposition procedure. Opposing a patent before the grant is an easier option as compared to the post-grant opposition because at this stage there is no burden of proof on the opponent. As the patent is yet to be granted at this stage, the pre-grant opposition does not involve the issuance of interim orders or injunctions. Pre-grant opposition helps patent offices to make more informed decisions because third parties, especially competitors having technical expertise in the field of invention, bring additional information to the attention of the controller. This paper also supports India’s approach of providing the additional safeguard of a more formal inter-partes post-grant opposition procedure. This paper also highlights certain lacunae in India’s opposition procedures and argues that India’s patent opposition model lacks clarity and legal certainty