Rule 63 of the Patents Rules, 2003
Determination of costs
Rule 63 lets the Controller decide who pays costs in an opposition, especially where the opponent does not carry the opposition through.
Official legal text
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This explanation is written for clarity, not for citation. The official statutory text and any Gazette notification in force on your date govern, and they prevail over anything said here.
What this rule requires, step by step
Opposition proceedings cost money. Somebody has to search the prior art, prepare affidavits, obtain translations and attend a hearing, and a party who is dragged through all of that by an opposition that is then abandoned has a legitimate grievance. Rule 63 gives the Controller the power to determine costs in opposition proceedings, and it applies in particular where the opponent gives notice that it does not wish to continue, or otherwise does not pursue the opposition to a decision.
The power sits alongside the Act, which gives the Controller certain powers of a civil court, including the power to award costs. Costs in patent office proceedings are not assessed on the basis of what the winning party actually spent. They follow a scale set out in the Fourth Schedule to the Patents Rules, which lists the amounts allowable for particular steps. The figures are modest compared with real legal spending, so costs work as a discipline on conduct rather than as a full indemnity.
In practice the Controller looks at how the proceeding was run. An opponent that files a serious case and withdraws after the patentee narrows its claims is in a different position from one that files a weak opposition, forces the patentee to answer, and then walks away. Delay, adjournments sought without reason, and evidence filed late without justification can all feed into the costs decision, and leave granted for further evidence under Rule 60 is frequently made conditional on costs.
Two practical points follow. First, if you are opposing a patent and decide not to continue, tell the office and the other side promptly and in writing. A clean withdrawal is treated far better than silence, and it limits the costs the other side can claim to have incurred. Second, if you are a patentee facing an abandoned opposition, ask for costs specifically and set out the steps you were put to, keeping the request within the scale rather than presenting a bill for your entire legal spend.
Why this rule matters
Opponents thinking of withdrawing, and patentees who have already answered an opposition.
When an opposition is abandoned or when the Controller disposes of the opposition.
A power in the Controller to award costs on the scale in the Fourth Schedule, and an expectation of orderly conduct from both sides.
An opponent who simply disappears may still face a costs order, and a patentee who never asks for costs will not get them.
How it works in practice
A withdrawal handled the right way
Chetan Wagh files a post-grant opposition against a patent held by Manipal-based Padma Diagnostics, relying on two publications and an allegation of prior use by his own firm. The patentee files a full reply with test data and an expert affidavit. Reading it, Chetan's agent concludes that the prior use records are too thin to prove a date and that one publication actually points away from the claimed method. Rather than let the matter drift towards a hearing, the agent writes to the Controller and to the patentee within the week, stating clearly that the opponent does not wish to proceed and does not oppose disposal of the matter. The patentee asks for costs, listing the steps it was put to. The Controller determines costs on the scale in the Fourth Schedule, awarding an amount for the reply statement, the evidence and the correspondence. Chetan pays promptly. The sum is far less than a contested hearing would have cost, and the clean exit preserves his firm's standing before the office.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- The Controller may determine costs in opposition proceedings.
- The power matters most where the opponent does not carry the opposition through.
- Costs follow the scale in the Fourth Schedule, not actual legal expenditure.
- The Act gives the Controller civil court powers including the award of costs.
- Conduct such as delay or late evidence can influence a costs decision.
- Withdraw in writing and promptly if you decide not to continue, and ask for costs specifically if you are the other side.
Common mistakes and misunderstandings
- Expecting costs to cover your real legal fees. Scale costs under the Fourth Schedule are much lower.
- Abandoning an opposition silently. Costs can still be awarded, and silence looks worse than a clear withdrawal.
- Forgetting to claim costs when the other side drops out. The Controller will not usually award them unasked.
- Filing an opposition mainly to delay a competitor. Conduct of that kind is exactly what the costs power addresses.
Connected provisions
A rule is subordinate legislation. It is made by the Central Government under a rule-making power in the Act and is amended by notification rather than by Parliament. The parent sections are listed on their own so that the source and the procedure are never confused.
Forms, deadlines and fees
- There is no fixed period, but a decision not to proceed should be communicated in writing without delay.
Open the deadline calculator — and have every date confirmed against the current Rules before you rely on it.
Where a fee is payable under this provision, the figure comes from the First Schedule. Categories of applicant are charged at different rates, and electronic filing is treated differently from paper filing, so an accurate number can only come from the Schedule in force on the day you file. How Indian patent fees work.
Related judgments
Case law is added slowly and deliberately. A summary is drafted, checked against the reported judgment and then reviewed before publication, because a wrong case note can mislead a reader badly. No summary for this provision has reached publication yet. How case notes are prepared.
Questions people ask about Rule 63
Can I recover my legal fees if an opposition against my patent is dropped?
Not in full. The Controller can award costs, but they are calculated on the scale in the Fourth Schedule to the Patents Rules, which allows set amounts for particular steps rather than reimbursing what you actually paid your agent or counsel. Ask for costs expressly, set out the steps you were put to, and keep the claim within the scale. The award is best seen as a discipline on the other party's conduct rather than as compensation.
What should I do if I want to withdraw an opposition?
Write to the appropriate office and to the patentee saying clearly that you do not wish to proceed, and do it as soon as you have decided. Prompt written withdrawal limits the further steps the other side takes, which limits the costs it can point to. Be aware that a costs order remains possible even after withdrawal. If the withdrawal is part of an understanding with the patentee, record the position in writing between the parties as well.
Are costs awarded against the losing party in every opposition?
No. Costs are discretionary, and the Controller looks at how the proceeding was conducted rather than simply at who won. A party that argues a genuine case properly and loses will not necessarily be ordered to pay. Costs are more likely where a party has caused avoidable expense, for example by seeking repeated adjournments, filing evidence out of time, or bringing a proceeding and then abandoning it after the other side has done the work.
Worried about the cost of a patent opposition?
MYCrave Consultancy advises on when to fight, when to narrow claims and when to withdraw cleanly.
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