Pre-Grant Opposition (India)

Patent oppositions play a vital role in maintaining the quality and validity of the patents granted in India. They provide a platform for third parties to prevent the grant of patents that do not meet the statutory requirements, or to revoke the patents that are granted unlawfully. Oppositions prevent the grant of monopolies over inventions that are not truly novel, are obvious, or lack utility. The patent opposition process ensures that patents are granted only for inventions that genuinely deserve protection under the patent law.

Third parties can file a pre grant opposition or a post grant opposition to prevent grant of monopoly right for an invention. The representation of a pre grant opposition is filed by the opponent with the Patent Office before the patent is granted. In case of a post grant opposition, the notice of opposition is filed by the opponent after the patent has been granted but within one year from the publication of the grant.

Statutory Provisions: Section 25(1) of the Indian Patents Act, 1970 deals with pre-grant oppositions in the Indian Patent System. It outlines the grounds on which a person can file an opposition against the grant of a patent before it is actually granted. In accordance with Section 25(1), any person can file a representation in writing to the Controller against the grant of a patent.

Grounds of Pre-Grant Opposition:

Section 25(1) outlines the grounds for filing a representation for opposition. These grounds include:

1. Wrongful Obtainment: This ground allows the opponent to oppose the grant of a patent on the basis that the applicant has wrongfully obtained the invention from the opponent. The applicant or their predecessor in title obtained the invention in a manner that was improper or against the rights of the opponent. The opponent is required to demonstrate that the invention or part thereof was obtained wrongfully by the applicant or someone from whom the applicant derives their rights. In order to substantiate this ground, the opponent is required to provide evidence showing that they had a prior right to the invention, or that the opponent acquired the invention from them in an unlawful manner. This ground ensures that patents are granted only to those who have legitimate rights to the invention.

2. Lack of novelty - Prior Publication: This ground allows the opponent to oppose the grant of a patent if the claimed invention has been previously published in a way that affects its novelty. If the invention as claimed in any claim of the complete specification, has been published before the priority date of the claim of the said invention, in any specification filed in pursuance of a patent application made in India on or after January 1, 1912; it is a ground for opposition. Further, if the invention as claimed in any claim of the complete specification, has been published in any other document, whether in India or abroad, before the priority date of the patent claim; it is a ground for opposition.

Furthermore, if the publication does not constitute an anticipation of the invention as per section 29(2) and 29(3), then the ground is considered valid. Thus, if the Opponent proves that the publication was without his consent and that the application in India and elsewhere was made as soon as possible, then the publication does not constitute anticipation under section 29(2)

3. Lack of novelty - Earlier Priority date: This ground allows the opponent to oppose the grant of a patent if the claimed invention of the applicant has been claimed in a claim of another complete specification published on or after the priority date of the applicant's claim, but the priority date of the application for the other invention in India is earlier than the applicant’s claim.

So, for example, the applicant’s invention was filed in India in patent application A, and the same invention was claimed in another patent application B filed in India but before the priority date of the patent application A but the patent application B was published on or after the date of filing of the patent application A. In this case, the patent application B acts as a secret prior art as it has an earlier priority date but is not publicly known as it is not published when the application A was filed.

4. Lack of novelty - Public Knowledge or Public Use in India Before Priority Date: This ground allows the opponent to oppose the grant of a patent if he is able to demonstrate that the invention claimed in any claim of the patent application was publicly known or publicly used in India before the priority date of the claim. Public knowledge includes instances where information about the invention was publicly available or accessible to the public in India. Prior use includes practice or use of the invention by the public of India before the priority date of the claim.

Further, in case of a process patent, if the product made by the claimed process had been imported into India from elsewhere before the priority date of the claim, then it is deemed to be public knowledge or public use except when the import is purely for the purpose of reasonable trial or experiment only.

5. Lack of an Inventive Step: This ground allows the opponent to oppose the grant of a patent if he can demonstrate that the claimed invention is obvious to a person skilled in the relevant technical field at the time of filing the patent application. Further, if the invention combines elements or techniques that were already known individually, the combination may be considered obvious if it does not result in an unexpected or non-obvious improvement.

6. Non patentable subject matter: This ground allows the opponent to oppose the grant of a patent if he can demonstrate that the subject matter claimed in any of the patent claims does not meet the criteria of being an "invention" as defined by the Indian Patents Act. Thus, the opponent is required to provide arguments and evidence that the invention lacks novelty, inventive step and industrial applicability.

Further, this ground allows the opponent to oppose the grant of a patent if he can demonstrate that the claimed invention is not patentable based on the criteria specified under section 3 of the Indian Patents Act. Furthermore, this ground allows the opponent to oppose the grant of a patent if he is able to demonstrate that the claimed invention relates to atomic energy and is not patentable under section 4 of the Indian Patents Act.

7. Insufficiency of disclosure: This ground allows the opponent to oppose a patent application if he can demonstrate that the complete specification does not adequately describe the invention. The opponent is required to demonstrate that the invention is not clear and sufficient to a person skilled in the relevant technical field to understand and replicate the invention without undue experimentation. Further if the Opponent demonstrates that the invention lacks enablement and best mode of invention, he can establish this ground.

8. Disclosure of foreign filing details: This ground allows the opponent to oppose a patent application if he can demonstrate that the applicant has failed to provide information relating the foreign filing details to the Patent office. The opponent is required to establish that the applicant has failed to disclose the required information or has knowingly provided false information relating to the details and the status of the foreign filings under Section 8 as required by the Controller.

9. Priority period for Conventional Application: This ground allows the opponent to oppose a patent application if he can demonstrate that the applicant or a person who derives title from him, has failed to file the Indian patent application within the twelve months period from the date of the first application as per Section 135(1) of the Indian Patents Act, for protection of the same invention made in a convention country.

10. Source or geographical origin of biological material: This ground allows the opponent to oppose a patent application if he can demonstrate that the complete specification does not disclose the source or geographical origin of the biological material used for the invention as required under Section 10(4)(d) of the Indian Patents Act; or if the source or geographical origin of the biological material is incorrectly mentioned.

11. Traditional Knowledge: This ground allows the opponent to oppose a patent application if he can demonstrate that the claimed invention is anticipated based on prior knowledge including practices, methods, or techniques within the local or indigenous communities, both in India and elsewhere.

Who can file: Any person (a competitor, an individual, or an organization) can file a pre-grant opposition to a published patent application.

Form: The Opponent is required to submit his representation along with his statement and evidence in Form 7A. If a request for examination of the patent application is not filed by the applicant, the opponent is required to submit a request for examination in Form 18 before filing the representation of opposition.

Fee: The fee specified for a natural person or startup or small entity or an educational institution is 4000 INR through e-filing. The fee specified for a large entity is 20000 INR through e-filing.

Procedures of Pre-Grant Opposition: Rule 55 of the Patent Rules, 2003 pertains to the procedure for filing a pre-grant opposition. The Patent Office provides an opportunity to the applicant to respond to the representation of opposition filed by the opponent. The Controller of Patents considers the opposition and the applicant's response before deciding on whether to grant the patent.

As per rule 55(1) of the Patent Rules, 2003, the opponent is required to submit the representation of opposition in form 7-A along with the prescribed fee and his statement and evidence; and a request for hearing if he desires. The opponent is required to send a copy of his representation to the applicant.

Further, as per rule 55(1) of the Patent Rules, 2003, a patent is not granted before the expiry of six months from the date of publication of the patent application in the official gazette of the patent office. Therefore, it is ideal that the opponent expeditiously files the representation within 6 months of publication of the patent application.

As per rule 55(2) of the Patent Rules, 2003, the representation under section 25(1) is considered by the Controller only if a request for examination is filed. Therefore, if a request for examination for the patent application has not been filed by the applicant, the opponent is required to submit a request for examination too in Form 18.

According to Rule 55(3), the representation for a pre-grant opposition is scrutinized by the Controller and he makes the following observations: (a) If the Controller determines that no prima facie case is established in the representation, the opponent is notified accordingly. If the opponent does not request a hearing, the Controller issues an order recording the grounds for refusal of the representation within one month from the date of notification.

(b) If the Controller finds no prima facie case in the representation, the opponent is notified accordingly. If the Opponent requests a hearing, the Controller provides this opportunity. Within one month from the hearing, the Controller passes an order recording reasons for refusal or prima facie acceptance and notifies the Applicant accordingly.

(c) If the Controller determines that a prima facie case is established in the representation, he passes an order recording the reasons for acceptance of the representation. The Controller notifies the applicant within one month of receiving the representation.

Upon receipt of the notice from the Controller under Rule 55(3), the applicant can file his statement and evidence under Rule 55(4) within two months from the date of such notice. The applicant is required to send a copy of his statement and evidence to the opponent.

Further, under rule 55(5), the Controller considers the submissions made by both the parties including the representation of the opponent, and the statement and evidence of the applicant. The Controller further issues a hearing and upon scrutiny of the submissions; either rejects the representation or requires the applicant to amend to the complete specification to his satisfaction, or rejects the patent application in its entirety. Accordingly, the Controller passes a speaking order within one month of completion of the opposition proceedings.

Additionally, Rule 55(5A) extends the applicability of procedures specified in sub-rules (2) to (4) of Rule 62, typically applicable for a post-grant opposition hearing, to pre-grant oppositions as well. Consequently, for a pre-grant opposition hearing, attending parties are required to notify the Controller as per Rule 62(2) and submit the prescribed fee. As per rule 62(3), failure to comply with this requirement may result in the Controller refusing to hear any party. Moreover, if any of the parties intend to rely on any publication not previously mentioned in the hearing, Rule 62(4) mandates providing at least five days' notice to the other party and the Controller, along with details of the publication.

Furthermore, under Rule 55(5B), for a patent application for which a notice has been issued by the Controller under Rule 55(3), the examination shall proceed in accordance with Rule 24C. Thus is all the Indian patent pre grant opposition process is designed to ensure that patents are granted only for inventions that genuinely deserve protection under patent law, promoting innovation while preventing unwarranted monopolies.