Getting a patent accepted by IPO-Pakistan doesn’t make it unchallengable. After an application has been accepted for advertising in the Official Gazette, any party with grounds to do so may formally oppose the patent grant. And for an applicant, knowing how this process works, and how to respond to an opposition, can be as important as knowing how to apply for a patent in the first place.
When an opposition can be filed
After an application has passed examination, IPO-Pakistan accepts the patent for advertisement in Part V of the Official Gazette. This is the cue for any third party that feels the patent should not be granted to file a notice of opposition during the time specified in the regulations.
How an opposition is filed
A notice of opposition is filed on Form P-7, for a fee of PKR 2,250. Both parties may also choose to notify the Controller that they wish to be heard in person, rather than having the Controller rule on the merits of the opposition based solely on the documents submitted. This is done by filing a Notice of Intention to Attend Hearing on Form P-8, for a fee of PKR 2,250.
Once a notice of opposition has been filed, the applicant has the right to respond, after which the Controller will consider the arguments and evidence presented by both sides in order to decide whether the patent should be granted, amended, or refused.
Common grounds for opposition
An opposition is usually filed on the grounds that the applicant is not the true inventor or entitled person, that the invention is not novel or does not involve an inventive step in the face of publicly available prior art that may have been overlooked by the examining officer, or that the subject matter of the application falls under any of the exclusions provided for in section 7 of the Patents Ordinance 2000 (such as business methods, discoveries, purely aesthetic works, etc.).
Why this process is important
An opposition filing does not necessarily mean the invention is not patentable or that the application was improperly drafted – it often comes down to how well the original application, specification, and drawings were prepared, as well as the response to the opposition. Those who cut corners during the filing process, and did not do their due diligence in researching the relevant prior art run the risk of their application being opposed. Our patent registration services include opposition defence and filing assistance on both sides of a dispute. If you’re still at the application stage, you may want to refer to our guide on how to patent an invention in Pakistan.
FAQs
Who can oppose a patent application in Pakistan?
Any third party with grounds to do so, typically another company (often a competitor) that feels that the patent should not be granted, or that they are entitled to it themselves, may file a notice of opposition after the application has been advertised as accepted. This includes parties that believe that the invention is not genuinely novel or non-obvious.
What form is used to file a patent opposition?
A notice of opposition is filed using Form P-7, for a fee of PKR 2,250.
Can I request a hearing during opposition proceedings?
Yes, both the applicant and the opposing party may request a hearing by submitting Form P-8, Notice of Intention to Attend Hearing, for a fee of PKR 2,250.
Does an opposition automatically prevent a patent from being granted?
Not necessarily. The Controller will review the arguments and evidence submitted by both parties and decide whether the patent should be granted, amended, or refused.
