India: The Two- Step Patent Opposition System In India----- Multiplicity Of Legal Proceedings Or Speedy Recourse To Justice?

Last Updated: 5 September 2016
Article by Singh & Associates

Most Read Contributor in India, September 2016

By Nilofar Absar1

Pre-Grant Opposition of Patents :

  • The major difference between "pre" and "post" grant oppositions of patents is that one need not be an interested party in order to oppose the grant of application.
  • Any party or individual or government can oppose the application simply by submitting a written statement to the Controller ( The Indian Patent Office).
  • No infringement proceedings lie from a pregrant opposition because the Patent is still in the "Application Stage".
  • Once the statement and evidence filed by the applicant and the representation including the statement and evidence filed by the opponent and submissions made by the parties has been made and after the parties have been heard , if so requested, the Controller will either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or application is refused.

Remedies available to the Applicant in case the pregrant opposition is accepted :

Earlier view:

The Intellectual Property Appellate Board (IPAB) has held on multiple occasions, there is no remedy against an order of the Controller in a pre-grant opposition, except to file a writ petition under the Indian Constitution. (Article 226).

A recent order by the Madras High Court shed some light on the existing ambiguities in the pre-grant opposition proceedings in the judgement of Yahoo! Inc v Assistant Controller of Patents and Designs and India Ltd. Rediff .com India Ltd had filed a Pre Grant Opposition against grant of patent to Yahoo! Inc. for a patent application the subject matter of which is related to a computer network search system, which was published on 20.04.2004 in Patents Journal No.16 of 2007. The Controller accepted the representation and refused to grant patent by holding that the invention of the applicant , lacked novelty and did not pass the test of patentability either. Challenging the above order, an appeal was preferred by Yahoo before IPAB.

However, the appeal in question was not discussed by the IPAB on the technical ground ,that no appeal under Section 117-A can lie against an order under Section 25(1) of the Patents Act, 1970. Challenging said order of refusal to entertain the appeal filed by Yahoo, a writ petition was filed before the High Court of Madras. Consequently, setting aside the order of the IPAB, Madras High Court adjudged that an appeal under Section 25 of the Patent Act lies under Section 117 A and that in the process of hearing such an appeal the party which had filed a Pre- Grant Opposition should be given a fair hearing before arriving at a conclusion on the facts presented by the Opposition, thereby providing clarities with regards to any remaining ambiguities.

Post-Grant Opposition of Patents :

  • The grounds for filing a post- grant opposition to a patent application are identical to the grounds for pre- grant opposition and can be found in S 25 (1) (a) to (k) of the amended Act.
  • Only " interested" parties can file for such an opposition and the opposing party has to be granted a hearing regardless of the merits of the case.
  • Infringement proceedings are now allowed as the patent is no longer in the application stage.
  • Appeals can lie from any decision or order of the Appelate Board now.

More often than not Patent disputes in India are characterized by multiple proceedings running parallel to each other in different jurisdictions. A single patent becomes the subject matter of opposition suits before the Controller, revocation suits before the Intellectual Property Appellate Board ("IPAB"), patent infringement suits filed by the patent holder in a district court and a counter claim filed by the defendant before the High Court, seeking to revoke the patent in question. The stakeholders in most patent disputes are usually "Big Fish" with extensive financial wealth who manipulate the statutory provisions and intentionally launch multiple proceedings, putting away the court's precious time to waste in an already overburdened legal system. In a recent development, the Supreme Court of India has shed some light on the procedure for revocation of patents in India by delivering a judgement that prevents opponents from contesting the validity of patents before more than one forum running parallel to each other. This drift from the older view has been aptly captured in the judgement of Dr. Alloys Wobben and Another v. Yogesh Mehra and Others1 in which it has been held that revocation of a patent can be sought either by filing a revocation petition before the IPAB or by filing a counter claim in a patent infringement suit before the High Court – however, both the recourses are not available to the opponent at the same time and they have to chose either one .

If an "interested party" has initiated proceedings under section 25 (2) of the Indian Patents Act , 1970 ; then the same would intercept his/her right to seek remedy under Section 64(1) of the Act. (Revocation Petition). This is for the simple reason that Section 64 is launched with the words "Subject to the provisions contained in this Act" and not with the words, "Without prejudice to the provisions contained in this Act.", or "Notwithstanding the provisions contained in this Act". Hence the legislature clearly intends to imply that the provisions contained in Section 64 are subject to all the other provisions contained in the Patents Act. If prior to the institution of an infringement suit against an interested party, such party choses to act on the liberty vested in him/her under Section 64(1), he/she would be barred in law from seeking the revocation of the patent giving rise to the infringement suit, by means of a counter claim. This denial of the rcourse available by way of a "counter-claim" under Section 64(1) of the Act is based on the principle of "Res Judicata" that is the essence of Section 10, read with Section 151 of the Code of Civil Procedure, 1908. A counter-claim is of the nature of an independent , fresh suit and hence it cannot be allowed to proceed, where the Respondent has already instituted a suit against the plaintiff (by way of revocation proceedings before the IPAB) on the same cause of action. The underlying principle behind this section is simple that the same cause of action cannot be the subject matter of a suit more than once if it has already been disposed off by a court of competent jurisdiction.


The Rationale behind the provision for pre- grant opposition procedure is speedy redressal in the initial stages of patent application itself with the aim of preventing the matter from going into further litigation and for the entire process to be more cost effective . Even from the business perspective it could be a welcome provision as it would give business competitors a chance to be on the look for possible violations of The Patents Act s and bring possible infringements and malpractices to the courts notice at the earliest possible chance. However with the new developments in the Indian Courts in recent times , the liberal approach has only lead to multiplicity of proceedings with parties contesting the grant of application at both pre and post stages of grant of application as we notice in the case mentioned above. Such practices are technically Res Judicata and hence barred from being tried again.


1.Legal Intern, symbiosis law school pune

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.