Pre-Grant Patent Opposition
Litigation for invalidating patents can be very lengthy and costly and therefore one way out of such long and expensive remedy is “Patent-opposition”. The Patents Act 1970, provides with two types of patent opposition i.e. “pre-grant” and “post-grant” under section 25 of the Act. The reason as to why these oppositions are at a better footing in terms of cost and time is because these proceedings are time bound.
As per section 25(1) read with Rule 55 of the Patents Act, 1970 a patent application can be opposed before the grant by “any person” with a “representation” for opposition filled in form 7A. Pre-grant opposition can be filed at any point of time after the publication of the patent application and before the grant of Patent. Further, section 25(1)(a) to 25(1)(k) of the Act provides with the grounds of pre-grant opposition as mentioned below:
- Wrongful obtainment of the invention
- Anticipation by prior publication (anywhere in the world): If there already exist and prior art
- Anticipation by prior claiming in India
- Public knowledge or public use in India before the priority date
- Obviousness and lack of inventive step [as defined in 2 (j) (a) of the Act] in the invention
- Being an excluded subject matter (such as those inter alia provided in Section 3)
- Insufficiency of disclosure of the complete specification
- Non-compliance of the requirement of Section 8 (disclosure of information of foreign application) or furnishing materially false information
- Non-filing of the application within 12 months of filing the first application in a convention country
- Non-disclosure or wrongful mention of the source or geographical origin of biological material
- Anticipation with regard to traditional knowledge of any community anywhere in the world
Pre-Grant Opposition Proceedings
As per the law “any person’ can file for the pre-grant opposition through representation to the concerned Controller on the basis of any of the above mentioned grounds. Representation of pre-grant opposition is accepted only after the examination request for the patent application. Such representation must include “a statement”, “request for hearing” and any “evidences” in support of said opposition. A copy of said representation is served to the Applicant as well. After accepting the representation, the Applicant is notified by the Controller and a reply to said opposition is to be submitted by the Applicant within three months of receiving said notice. After considering both representation and the reply by the Applicant, the Controller, if deems fit, take the matter up for hearing. After considering the representation, reply and evidences the Controller either accepts the representation and refuse to grant patent or rejects the representation and can ask for the amendment in the patent application or grants the patent.