Patent opposition system in India: Pre-grant & Post grant oppositions

The Patent laws of various countries provide a provision for opposition proceedings. Opposition proceeding is an administrative process available under the patent and trademark law of many jurisdictions which allows third parties to formally challenge the validity of a pending patent application and a granted patent.  Similarly, the Indian patent law also provides an opportunity to the public to take part in a patent proceeding to challenge the patent applications and the granted patents by raising objections by filing an opposition with the Indian patent office. The Indian patent law provides two kinds of patent oppositions proceedings. The opposition proceedings before the grant of a patent are usually called pre-grant and those after the grant are usually called post grant opposition. In this blog we deal with the concept of pre-grant opposition system in India.

Pre-Grant Opposition: Section 25(1) of the Indian patent (Amendment) Act 2005 provides a provision for filing a pre-grant opposition against a patent application. Under this provision any person, any third party or the Government may challenge the application of grant of patent and inform to the controller of Patents of the opposition, in writing against the grant of a patent after the application for a patent has been published and/but before the grant of the patent. Pre-grant opposition acts as a defensive shield to confirm the validity of the patent applications before patents are granted to them. The pre-grant opposition procedure acts as a safety net to capture questionable patent applications before a patent is granted to them.

Pre-grant opposition can be made on the grounds listed under section 25(1) (a) to (k) of the Patent Amendment Act, 2005:

• Wrongfully obtaining the invention
• anticipation by prior publication
• anticipation by prior date, Prior claiming in India
• Prior public knowledge or public use in India
• Obviousness and lack of inventive step
• non patentable subject matter
• insufficiency of description of the invention
• non-disclosure of information as per the requirement or providing materially false information by an applicant
• Patent application not filed within 12 months of filing the first application in a convention country
• nondisclosure/ wrong mention of source of biological material
• Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.

Proceedings Under Pre-Grant Opposition: Any person can file a pre-grant opposition by way of a representation to the Controller against the grant of patent based on any of the grounds mentioned above. The representation is required to include a statement, a request for hearing and evidence (if any) in support of the representation. The controller considers the representation only after a request for examination for that patent application has been filed. After considering the representation, the controller notifies the applicant with a copy of the representation. The applicant is required to reply to the notification with his statement and evidence (if any) in support of his application within three months from the date of the notice. The Controller then based on the statement and evidence filed by the applicant either refuses the grant of the patent or asks the applicant for amendment of the complete specification to his satisfaction. Finally, after considering the representation and response by the applicant the controller proceeds further by either rejecting the representation and granting the patent with amendments to the complete specification or accepting the representation and refusing the grant of the patent within one month from the completion of above proceedings.

In India, the opposition proceedings take place before the controller general of patents. The major advantage of initiating opposition proceedings with the India patent office is that the whole process is strictly time bound, therefore interested parties do not have to go through lengthy and tedious procedures, which may also involve considerable time till the matter is decided. The cost incurred in opposition is also minimal compared to litigation costs.

Authored by Madhu K, Patents division at BananaIP Counsels