Instructions, Template and Headings

INSTRUCTIONS:
1. Please read the SAMPLE (attached) case (Lalit Mahajans case) to get an idea about
the style that we follow.
2. You will have to prepare a NOTE (on a new MS word document) in the same style as
the SAMPLE case. The NOTE you prepare for the ASSIGNED CASE (attached) is
the deliverable for your end.
3. Read this document carefully before making the NOTE for the patent office decision
assigned to you. You should read the decision and make a note in the same pattern as
the SAMPLE. The colour-code on the SAMPLE shows you the different kinds of
HEADINGS (see below for the list of headings) that you will have to place in the
NOTE your prepare. The HEADINGS is created from two chapters of the book The
Law of Patents. Copies of the TWO CHAPTERS (not attached) can be emailed to
you at your request. Reference to the TWO CHAPTERS can improve the quality of
your NOTE.
4. You are expected to capture the following information from the ASSIGNED CASE
and arrange it in the format of the SAMPLE case:
a. Name of Applicant:
b. Name of Opponent(s):
c. Patent Office Branch:
d. Name of Controller:
e. Decision Date:
f. Application Number:
(The information from a. to f. are captured in the title part of the NOTE. See
TEMPLATE below highlighted in yellow)
g. Subject Heading:
h. Title/Summary of Invention:
i. Chapter Heading:
j. Heading 1:
k. Heading 2:
l. Heading 3:
m. Heading 4:
n. Heading 5:
o. Result of Opposition:
p. Status of Application:
(The information from g. to p. are captured in the headnote part of the NOTE.
See TEMPLATE below highlighted in green)
5. Please refer to the TEMPLATE below to see how the above information is to be
arranged in your NOTE. The SAMPLE case was created following this format.

Instructions, Template and Headings

TEMPLATE:
<Name of Applicant> Opposition by<Name of Opponent(s)>
<PATENT OFFICE WITH BRANCH >
<(Name of Controller)> <Date of Decision>
<Case number give by Court> , <Case Identification number: Year followed by OBG>

<Subject Heading><Title or summary of invention><Chapter Heading>

<Heading 1><Heading 2><Heading 3><Proceeding under
section__of ____Act/Rules><Heading 4><Issue 1><Defense to Issue
1><Finding in Issue 1><Heading 4><Issue 2><Defense to Issue 2>
<Finding in Issue 2><Heading 4><Issue 3> <Defense to Issue 3>
<Finding in Issue 3><Heading 4><Issue 4><Defense to Issue 4>
<Finding in Issue 4><Result of Opposition> <Status of the Patent
Application >.
<Cases Referred>
<Counsel for Applicant>
<Counsel for Opponent>

Instructions, Template and Headings

HEADINGS:
1. The following HEADINGS are taken from Chapter 13 and 14 of the
book The Law of Patents. The NOTE you prepare should include
these headings.
2. Compare these headings and the colour-codes with the
corresponding colour-codes in the SAMPLE to get a clearer picture.
3. The NOTE should capture the same words of various HEADINGS.
4. There is no need to colour-code your NOTE. The colour-coding is only
for your understanding.
5. The Subject heading highlighted in yellow will always be
Patents.
6. The Chapter heading highlighted in green will always be
Opposition Proceedings.
7. Heading 1 can be a host of headings in UPPERCASE bearing the
numericals 1, 2, 3 etc in the section below, some of which is
highlighted in blue.
8. Heading 2 can be a host of headings in italics bearing the
alphabets (A), (B), (C), etc in the section below, some of which are
highlighted in pink.
9. Heading 3 can be a host of heading in italics bearing the roman
numerals (i), (ii), (iii), etc in the section below, some of which are
highighted in red.
10.
Heading 4 can be a host of heading bearing the lowercase
alphabets (a), (b), (c), etc in the section below, some of which are
highighted in dark yellow (looks like military green.
11.
Heading 5 can be a host of heading bearing the numericals
(1), (2), (3), etc in the section below, some of which are highighted
in grey.
12.
In most cases, you will be able to find a match only upto
Heading 3. If you dont find an appropriate Heading 4 or
Heading 5, please create one or add it under Heading 3.

Patents [Subject heading]

OPPOSITION PROCEEDINGS [Chapter

heading]

1. INTRODUCTION [Heading 1]
(A) Importance of Opposition Proceedings [Heading 2]
(i) Challenge Before the Granting Authority [Heading 3]
(ii) Challenge by Peers
(iii) Time-bound Proceeding

Instructions, Template and Headings

(iv) Cost-effective
(B) Provisions Under the Patents Act 1970
(i) Guidelines for Practice
(C) Comparative Provisions
(i) Opposition Proceedings in EPO
(D) Opposition Proceedings in Context
(i) Opposition Proceedings
(a) Opposition to the Grant of a Patent [Heading 4]
(b) Opposition Proceedings in General
(ii) Revocation Proceedings
2. OPPOSITION BEFORE THE GRANT
(A) Nature of Pre-grant Opposition
(i) Not Proceedings Inter-partes
(a) No Stipulated Procedure for Entering Appearance
(b) No Procedure for Hearing the Opponent
(c) Opposition Subject to the Discretion of Controller
(d) No Right to Know the Applicants Defence
(e) No Provision for Appeal and Costs for the Opponent
(ii) Res Judicata and Pre-grant Opposition
(B) Status of Opponent
(i) Identification of Opponent
(a) Straw man
(b) Technical Competence
(ii) Sham Opposition
(iii) Representation in Pre-grant Opposition
(C) Grounds of Pre-grant Opposition
(i) Introduction
(a) Provisions Under the Patents Act 1970
(b) Comparative Provisions
(c) Grounds Exhaustive

Instructions, Template and Headings

(1) Opposition Beyond the Grounds in Section 25 [Heading 5]
(d) Comparison with Grounds of Revocation
(ii) Invention wrongfully obtained: sections 25(1)(a)
(a) Obtained the invention
(b) Burden of Proof
(1) When the Burden is on the Applicant
(c) Relief in the Case of Wrongful Obtaining
(iii) Prior publication: sections 25(1)(b)
(a) Kinds of Prior Publications
(b) Conditions to be Satisfied by the Opponent
(c) Determination of Prior Document
(1) Prior Publication Should Suggest the Latter Claim
(2) Alternatives in a Prior Document
(3) Construction of Prior Documents
(4) Priority Date
(d) Statutory Exceptions
(iv) Prior claiming: sections 25(1)(c)
(a) Published in India
(b) Published Before Date of Hearing
(c) When a Specification Becomes Void
(d) Reference
(1) Reference to Prior Claim
(v) Publicly known or publicly used: sections 25(1)(d)
(vi) Lack of inventive step: sections 25(1)(e)
(a) Clearly does not involve any inventive step
(b) Benefit of Doubt in Favour of Applicant
(c) Proof of Obviousness
(d) Prior Art to be Read Into Specification
(vii) Subject of claim not an invention or not patentable: sections 25(1)(f)
(viii) Insufficiency: sections 25(1)(g)
(ix) Non-disclosure of information: sections 25(1)(h)
(x) False claim to convention priority: sections 25(1)(i)
(a) Scope of the Ground

Instructions, Template and Headings

(b) Time-barred Convention Application
(c) Basic Application not a Convention Application
(1) Three Requirements of Section 135
(2) Convention Country
(d) Determining the Priority Date
(e) Non-convention Application
(xi) Non-disclosure of biological material: sections 25(1)(j) and 25(2)(j)
(xii) Anticipation by traditional knowledge: sections 25(1)(k) and 25(2)(k)
(D) Admissibility of Pre-grant Opposition
(E) Procedure of Pre-grant Opposition
(i) Written Representation
(ii) Hearing
(iii) Evidence
(a) Request for Documents
(b) Late Submission of Documents
(iv) Scope of Opposition
(v) Fresh Grounds of Opposition
(vi) Burden of Proof in Pre-grant Opposition
(vii) Representative Action
(viii) Withdrawal of the Opposition
(ix) Transfer of Opposition
(x) Time-bound Procedure
(a) Time Limit for Preferring an Opposition
(b) Time Limit for Disposing Opposition
(c) Extension of Time
(F) Fees
(G) Decision of Controller
(H) Costs
3. OPPOSITION AFTER THE GRANT
(A) Nature of Post-grant Opposition

Instructions, Template and Headings

(i) Proceedings Inter Partes
(ii) Res Judicata and Post-grant Opposition
(B) Status of Opponent
(i) Person interested
(a) Straw man
(b) Technical Competence
(c) Locus Standi of the Opponent
(1) Person interested to be Construed Widely [Heading 5]
(d) Holding Company and its Subsidiary
(e) Interest of an Opponent
(1) Interest in the Possession of an Invention or Patent
(2) Interest in Manufacture
(3) Interest in Trade
(4) Interest in Research
(5) Interest in Public Health
(ii) Sham Opposition
(iii) Intervention by Third Parties
(iv) Representation in Post-grant Opposition
(C) Grounds of Post-grant Opposition
(D) Admissibility of Post-grant Opposition
(E) Procedure of Post-grant Opposition
(i) Notice of Opposition
(a) Filing of Notice
(b) Publication not Mentioned in Notice
(c) Requirements of Notice
(d) Sufficiency of Notice
(e) Power to Amend Notice of Opposition
(ii) Opposition Board
(a) Constitution and Eligibility

Instructions, Template and Headings

(b) Recommendation of the Opposition Board
(c) Procedure of Examination
(iii) Written Statement of Opposition
(a) Documents Filed by the Opponent
(iv) Reply Statement of the Patentee
(v) Evidence in Reply of the Opponent
(vi) Hearing
(vii) Scope of Opposition
(viii) Fresh Grounds of Opposition
(ix) Representative Action
(x) Evidence and Trial
(a) Documentary Evidence
(1) Late submission of documents
(2) Admissibility of late-filed documents
(b) Oral Evidence
(c) Expert Evidence
(xi) Burden of Proof in Post-grant Opposition
(a) When Does the Burden Shift
(xii) Standard of Proof in Opposition
(xiii) Introduction of Late Argument
(xiv) Withdrawal of the Opposition
(xv) Transfer of Opposition
(xvi) Non-appearance of Party
(xvii) Time-bound Procedure
(a) Time Limit for Preferring an Opposition
(b) Time Limit for Disposing Opposition
(c) Extension of Time
(xviii) Amendment of Wrongfully Obtained Patent
(xix) Opposition Proceedings and Infringement Action

Instructions, Template and Headings

(F) Opposition Fee
(G) Decision
(i) Deemed Revocation
(ii) Reasons for Decision
(H) Costs
4. DIFFERENCE BETWEEN PRE-GRANT AND POST-GRANT OPPOSITION
POWERS OF THE CONTROLLER
(A) Power to go Beyond the Opposition
(B) Power Exercised in Public Interest
(C) Power to Allow Amendment of Notice
(D) Power to Review and Set Aside Ex Parte Orders
(E) Power to Amend Application and Specification
(i) Amendment During Opposition
(ii) Amendment in Case of Obtaining
5. APPEALS
(A) Appeals from Pre-grant Opposition Proceedings
(B) Appeals from Post-grant Opposition Proceedings
(C) Appeal Against Interim Orders in Opposition
(D) Appeal Against Withdrawal of Opposition
(E) Writ Jurisdiction and Role of Courts

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