PATENT%20OPPOSITION%20AND%20STRATEGY

1
PATENT OPPOSITION AND STRATEGY

• Essenese Obhan, Obhan Associates

2
Topics for Todays 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 Law Actual Examination
1. 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
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
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
Non Disclosure
False Convention claim
Not Inventive
Insufficiency
Publicly known or Used
Not Patentable
Wrongful Obtaining
Traditional or oral knowledge
10
Pre Grant

11
Pre Grant Procedure
12
Post Grant
13
Post Grant Procedure
14
Revocation
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_at_obhans.com
• www.obhanandassociates.com