PRE-GRANT OPPOSITION IN INDIA

Any person (including the Government) can represent for opposition, in writing, to the Controller General of Patents, Designs and Trade Marks of India (henceforth referred to as Controller), against the grant of a patent after the application for a patent has been published but a patent has not been granted. The pre-grant opposition procedure acts as a safety net to capture questionable patent applications before a patent is granted on them. 

Post-grant Opposition can be filed at the appropriate office by any interested person within 12 months from the date of publication of the grant of patent in the Indian Patent Journal.

The grounds of opposition as provided under section 25 (1) of the Patent Act 1970, are as follows:

1. The patentee or the applicant wrongfully obtained the invention from the opponent or a person from whom the opponent derives title;
2. The invention was published before the priority date, subject to the limitations on anticipation under section 29 Patents Act, 1970; 
3. The invention was previously claimed in an Indian application having an earlier priority date; 
4. The invention was publicly known or publicly previously used in India and if an invention relates to a process then it shall be deemed to publicly known or publicly used in India when a product made by that process had already been imported into India before the priority date; 
5. The invention lacks any inventive step over any prior publication or over any prior use in India; 
6. The subject matter of the invention is not patentable under the Patent Act 1970; 
7. The disclosure of the invention or the method by which it is to be performed is not sufficient and clear; 
8. The patentee has failed to disclose or has furnished false information regarding foreign applications; 
9. There is no disclosure or wrong mentioning of the source and geographical origin of the biological material used for the invention; 
10. The invention is anticipated by the tradition knowledge in India or elsewhere.

 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 on any of the grounds mentioned in Section 2.1 above. The representation is required to include a statement, a request for hearing and evidence (if any) in support of the representation. A representation is

required to be filed within a period of 6 months from the date of publication of the patent application under section 11A. 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.

.

Posted in: INDIAN PATENT SYSYTEM