QUESTION: Rule 56 (1) – states – “On receipt of the notice of opposition under Rule 55A, the controller shall, by order, constitute an opposition board, ……..”
Rule 56 (4) states – “…………………….. with its joint recommendation within three months from the date on which the document were forwarded to them”
Can there be a gap between the date on which the controller issues the order and the date on which the documents were forwarded to Opposition Board? Kindly clarify.
ANSWER by Dr.Feroz Ali:
This is an interesting question and we need to compare post grant opposition, which is the relevant rule, which the questioner had mentioned, with the new procedure under pre-grant opposition to understand the way in which things are structured.
First let me take you through the procedure under rule 55. Rule 55 now states, the amended part, rule 55(1) now states that the representation shall be filed in the appropriate office with a copy to the applicant and shall include a statement of evidence if any in support of the representation and request for hearing. So in the pre-grant procedure as it now stands, earlier there was no form for pre-grant procedure now they have introduced form 7A. As it stands now, the procedure is while you file the opposition in the appropriate office you have to give a copy to the applicant, you need to understand that this is one type of giving notice to the other side and how the process is set into motion.
Now if you compare this with the question here, which is on 55A, 55A merely states that notice of opposition is to be given in form 7 and sent to the controller in duplicate at the appropriate office; that is all. It doesn’t say whether you should give a copy to the patentee because post grant it is not the applicant it is the patentee, it doesn’t say anything about further details. It just stops there. Now the questioner asks is there a gap between this process mentioned in 55A and 56(4) which talks about the constitution of the opposition board and how the opposition board should proceed. Now the opposition board is constituted upon receiving the notice under rule 55A there is no doubt about it, but if you read 56(4) it says that the opposition board shall conduct the examination of the notice of opposition along with the documents, now that is important, along with the documents filed under rules 57 to 60 referred to under section 25(3).
Now if you look at these documents that they have mentioned in the respective rules, 57 talks about the written statement of opposition and evidence. Now this rule 57 separately states that the opponent shall send the written statement in duplicate setting out the interest of the opponent as well as the case on which he bases his relief and the evidence if any along with the along with notice of opposition and shall deliver to the patentee a copy of the statement and the evidence. Here it states the notice of opposition is not to be filed alone, so it has to be filed along with the statement of opposition and evidence. In 55 you found that it is all together, here it’s in 2 parts notice of opposition is in 55A and the statement is in 57. Now once this is done, within 2 months under rule 58 the patentee has to reply and after that under rule 59 within 1 month the opponent has to give a counter and then under rule 60 there is also room for further evidence. You can take a special petition, a leave as they say and file further evidence, so what 56(4) is telling us is that the documents mentioned in 57, 58, 59, and 60 all that when it’s completed has to be forwarded to the opposition board based on which the opposition board will submit a report with reasons on each ground on the notice of opposition with its recommendation within 3 months from the date on which the documents are forwarded to them. So we understand the word document here as the documents mentioned in 57, 58, 59, and 60 because that is what 56(4) refers to. So there is going to be a huge timeline between these 2 things and in my personal experience it can take months and sometimes even years, because if people are going to take time and there are procedures by which you can extend the time and mind you rule 60 simply states that you can file any evidence before the controller has called for a hearing.
The controller normally calls for a hearing based on the pending matters before him and his other day to day affairs. So if there is a long gap between filing all the documents and the hearing and suddenly the opponent or the patentee feels that they want to file further evidence, as long as the controller has not called for a hearing fresh evidence can still be filed. So all these documents put together has to be handed over to the opposition board and within that time, I mean I would understand that the time starts, the 3 months will start after any document under section 60 is filed and section 60 because there is no timeline it essentially means that once the controller calls for a hearing. So if the controller again, the controller will have some internal idea about when he is going to call for a hearing and based on that once the documents are completed he can give the opposition board 3 months’ time. So the 3 months’ time, we understand 3 months’ time as the time that kicks in after documents are submitted under rule 60. Rule 60 is an exception because in normal case 57, 58, and 59, the documents filed by the opponent, reply statement by the patentee and a counter by the opponent would normally sum up things in rare cases will they file further evidence. You can take from 59 if all the documents are forwarded to the opposition board they take 3 months.