1. Types of Intellectual Property Rights & Grant Procedure
1.7 Third-Party Rights to Participate in Grant Proceedings
Third parties may participate during grant procedures via the following procedures:
- Opposition: after the examination procedure has been concluded, the acceptance of the application is published in the Official Monthly Gazette (available online). Any third party can oppose the patent’s grant within three months from the date of publication.
The grounds for filing an opposition include:
- there is reason for which the Patent Registrar was authorised not to accept the application;
- the application does not withstand the requirement set forth in section 4(2) (ie, novelty by public use, which the Patent Office is not required to examine); or
- if the opponent is the true owner of the invention rather than the applicant.
The patentee may apply for an amendment during revocation proceedings only for the purpose of clarification, removing an error in the specification, or restricting the claims. The Registrar will permit the amendment if he is convinced that the amendment will not broaden the scope of the claims and will not add anything to the specification not already included from the start.
- Post-grant revocation (cancellation): any person may file an application to revoke a granted patent with the Patent Office, without need to show locus standi. An application for revocation may be filed at any time and the statute of limitation does not apply. The grounds for filing a revocation application are identical to the grounds for filing a pre-grant opposition. The Registrar may accept the application (and revoke the patent), deny the application or accept the application partially (eg, by deleting/narrowing some of the claims).
- Third party observations: according to the statutory provisions of the Patents Act, during the course of examination any third party is entitled to submit copies of relevant prior art publications to the PTO. The examiner may use them during the examination as long as they were sent within two months from the due date for the applicant's response to the request under section 18 (demand to send any cited publications and other pertinent prior art publications known to the applicant).
- Third party request to initiate examination: in addition, third parties are allowed to file an application, supported by an affidavit, for immediate examination, for one of the following reasons:
- there is reason to believe that examination based on the order in which the applications were filed will cause the applicant (of the request for immediate examination) to postpone the development/manufacture of the process/product that is claimed in the patent application;
- the amount of time that has passed from the date the application was filed is unreasonably long and is significantly longer than any other application of the same kind; public interest or any other special circumstances.
Lastly, it is always possible to challenge the validity of the patent as a defence during an infringement trial.