India: PCT Third Party Observations & Pre-Grant Opposition In India: An Analysis:

Last Updated: 5 June 2017
Article by Suchi Rai

Most Read Contributor in India, December 2018

Pre-Grant Opposition in India:

In India there is provision of Pre- Grant Opposition, whereby any person can represent by way of opposition to the Controller of Patents against grant of a patent for any invention based on specific grounds as mentioned in Section 25(1) of Indian Patents Act, 1970. In case the Opposition representation is found to be valid, it may assist Patent Office in taking decision with regards to patentability of an invention before a Patent is granted to the invention, thereby resulting in grant of valid patents.

PCT Third Party Observations:

In the international phase of PCT application, originally the only people involved were the applicant and the Offices conducting various aspects of processing (receiving office, International Bureau and International Searching and Preliminary Examining Authorities). Third parties were getting some information during the process of International Phase, but have had no opportunity to comment unless the application entered the National Phase and as allowed by National laws.

World Intellectual Property Organization (WIPO), introduced Third Party Observations Service, whereby third parties are permitted to make certain observations on an international application during the international phase if they believed that the claimed invention is either not new (lacks novelty) or is obvious (lacks inventive step).

Analyzing the two system provisions regarding Pre-Grant Opposition in India & PCT Third Party Observations:

  • Third party observations can be submitted from the International Publication date until 28 months from the Priority date, whereas Pre-Grant Opposition can be submitted any time after the Publication of application, but before the grant of Patent.
  • In third party observations, a person may only make a single observation on any particular International application, whereas there is no such restriction for Pre-Grant Opposition, and as many representations can be submitted in respect of a particular application.
  • In third party observations, only a maximum of ten observations may be submitted on any particular International application, whereas Pre-Grant Opposition can be submitted in respect of a particular applications with as many grounds and as many citations or observations.
  • Both Third Party Observations and Pre-Grant Opposition may be submitted by any person and not necessarily by an interested person.
  • Both are restricted to certain specific grounds, where third party observations are limited to comments on novelty and inventive step only, Pre-Grant opposition is limited to grounds as mentioned in Section25 (1) of Patents Act, which includes novelty and inventive step.
  • In Third Party Observations, the submission is required to be made online using the e-PCT Public Service, after making a WIPO user account; whereas Pre-Grant Opposition can be submitted either online by e-filing route or as hard copies at respective Indian Patent Office.
  • In both Third Party Observations and Pre-Grant Opposition, there is no filing fee involved, and any person before making such observation will not be worried about the costs involved.
  • In Third Party Observations, the National Patent Office is free to ignore the observations, even if the same is published by WIPO; however in Pre-
  • Grant Opposition, the examiner cannot ignore the opposition representation and has to evaluate the validity of Patent to be granted following the statutory procedure.
  • In Third Party Observations, the applicant of International application is not mandated to file a response on observations; however the same can be filed within 30 months from Priority date; whereas in Pre-Grant Opposition, the response by applicant of Patent application is mandatory and is required to be submitted within 3 months of receiving Opposition Notice.
  • In Third Party Observations, the applicant has no right to interfere or participate in further proceedings of the application, once the observations are made; whereas in Pre-Grant Opposition, the applicant who filed Opposition has a right to be heard, if allowed by the Controller, and will be participating in the procedural formalities for the Pre-Grant Opposition before the Controller of Patents.

Earlier there was no mechanism to comment on PCT International application unless the same entered National Phase in different countries. This provides an opportunity to make observations on PCT applications, during International Phase, claiming that the invention lacks novelty or inventive step.


PCT Third Party observations system can be said to be bearing similarities with Pre-Grant Opposition in India. The system of Third Party Observations introduced by WIPO can be helpful for National Offices in getting Prior Art references. Such observations by Third Parties might assist International Searching Authorities (ISA) and International Preliminary Examining Authorities (IPEA) with the Prior Art documents. The beneficial thing about third party submissions is that, it is applicable worldwide; all the nations can refer to the observations made on any International application.

Like ISA & IPEA search reports, Third Party Observations will equally not be binding on National Offices Examiners, and may only be considered as references. Unlike Pre-Grant Opposition in India, the National Patent Office Examiners who are ultimately deciding on the Patentability of invention, are not bound by Third Party Observations made on any International Application and are free to ignore them completely.

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.

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