Understand software patentability in India under Section 3(k), the role of technical effect, and how it compares with US, EU, and Japan practices for strategic IP protection.

Defending Your Patent Against Opposition

If a patent opposition (either pre-grant or post-grant) has been filed against your patent application or granted patent, don’t panic — you have the right and opportunity to defend it.

Handling an opposition correctly can make or break your patent. A well-strategized and well-documented reply is key to protecting your IP rights.

This guide will walk you through how to respond to a patent opposition in India, with strategy, procedure, and examples.

Types of Oppositions You May Face

When and How Will You Be Notified?

You'll receive an official notice from the Patent Office with:

• Opposition grounds

• Statement of opposition (Form 7 or 7A)

• Affidavits and documents submitted by the opponent

• Deadline to file your counter-statement

• You typically have 3 months (extendable by 1 month) to file your reply.

Step 1: Review the Opposition Thoroughly

Analyze:

• The grounds of opposition (Sections 25(1) or 25(2))

• Any prior art documents or publications cited

• The structure and arguments in the opposition statement

 Focus on:

• Section 3 objections (software, agriculture, etc.)

• Section 2(1)(j) – Novelty and Inventive Step

• Section 10 – Sufficiency of disclosure

• Any false or incomplete information allegations

Step 2: Prepare a Counter-Statement

This is your formal written reply, where you must:

• Deny or admit each allegation

• Provide technical clarifications or legal rebuttals

• Clarify differences from prior art

• Include any claim amendments, if required (using Form 13)

• Optionally, submit evidence, diagrams, affidavits, or expert opinions

Step 3: Submit the Counter-Statement and Evidence

Documents Required:

• Counter-statement

• Evidence, technical data, expert opinions

• Form 13 (if claim amendments are included)

File everything through the IP India e-filing portal.

Step 4: Prepare for the Hearing (If Scheduled)

After submission of the counter-statement, the Controller may:

• Schedule a hearing

• Refer the case to an Opposition Board (mandatory for post-grant)

How to Present:

• Defend the patent's novelty, inventive step, and industrial applicability

• Point out flaws in the opponent's arguments

• Back claims with evidence, citations, and prior art comparisons

Step 5: Amend Claims If Needed

You can amend claims to:

• Clarify scope

• Overcome objections

• Narrow the invention without adding new matter

Best Practices

Conclusion

Oposition Is Defendable with the Right Strategy.

Whether pre-grant or post-grant, opposition is not the end — it’s your chance to prove the strength and originality of your invention.

A well-prepared, timely, and evidence-based reply can ensure your patent survives the challenge and proceeds to grant or continues in force.

At times, a smart claim amendment can diffuse the issue altogether — while preserving protection.

FAQs – Responding to Patent Opposition

Q1. Can I ignore a pre-grant opposition?
👉 Technically yes, but responding is highly advised to avoid rejection or future litigation.

Q2. Do I need a hearing for pre-grant opposition?
👉 Not always. It is at the Controller's discretion, but a hearing can help strengthen your defense.

Q3. Is the Opposition Board involved in pre-grant cases?
👉 No, it is mandatory only in post-grant opposition.

Q4. Can I modify my claims during opposition?
👉 Yes, using Form 13, but modifications must remain within the disclosure of the original application.

Q5. Can I appeal if the Controller rules against me?
👉 Yes, you can file an appeal to the IP Division of the High Court.