India: Pre-Grant Opposition

Introduction

Patent opposition can be done either before the grant of patent by filing Pre-grant Opposition or after the grant of the patent within a year by filing post grant opposition. In this article we focus on Pre-Grant opposition in light of draft amendment rules published on December 04, 2018.

Where an application for a patent has been published but a patent has not been granted, "any person" may oppose the grant of patent by filling Form 7A mentioned under Second Schedule of the Patent Rules, 2003, on the grounds enumerated in Section 25(1) of the Patent Act, 1970. Historically, the legislature in Patents (amendment) Act, 2005, has widened the locus standi for filing pre-grant opposition by giving access to "Any Person" as against the "Person Interested" to object the grant of a patent.

Grounds of opposition under section 25(1) of the Act

  • Invention obtained wrongfully - The grant of Patent may be opposed by any person on the ground that the applicant for the patent has wrongfully obtained the invention or any part thereof from him or any person claiming through him.
  • The invention claimed in complete specification has been published before the priority date in India or elsewhere in any document.
  • The invention has been claimed in a claim of a complete specification published on or after the priority date of the application filed in India.
  • The invention claimed was publicly known or publicly used in India before the priority date. Further, it has been clarified that an invention relating to a process for which a patent is claimed is deemed to have been publicly known or publicly used in India before the priority date if a product made by that process has already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only.
  • The invention claimed is obvious and does not involve inventive step. The question of obviousness is to be judged by reference to the "State of the Art" in the light of all that was previously known by persons versed in that art including their experience of what was practically employed, as well as from the contents of previous writings, specifications, text books and other documents.
  • The subject of any claim is not an invention or is not Patentable under the Act. Chapter II of the Patent Act, 1970 (sections 3-4) provides for the inventions which are not patentable.
  • The complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed. What is relevant is the sole question whether or not the description given is going to be sufficient to enable a person who is reasonably skilled in the particular field to make an embodiment of the invention as claimed.
  • The applicant has failed to disclose to the controller the information required under section 8 or has furnished the information which is false to his knowledge.
  • In case of Convention Application, the application was not made within 12 months from the date of the first application in a convention country.
  • The complete specification does not disclose or wrongfully mentions the source of geographical origin of biological material used for the invention. This ground was inserted by the Patents (Amendment) Act, 2002, consequent to the changes made in section 10 (contents of specification) of the Patents Act, 1970.
  • The invention is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Procedure for Pre-grant Opposition in light of draft amendment rules.

According to Rule 55 of the Patent Rules, 2003, the Controller will consider the Pre-grant opposition only when a request for examination of the application has been filed.

According to the draft amended rules, on consideration of the opposition, the Controller shall constitute a bench comprising two members, who shall proceed to dispose off the Pre-grant opposition jointly, as against the current practice where the Controller examining the application decides the outcome of the proceedings. If the bench is of the opinion that the opposition is devoid of merit, an opportunity to be heard shall be granted to the opponent if requested. After hearing the opponent, if the bench is still of the opinion that the opposition shall be refused, a speaking order shall be issued rejecting the pre-grant opposition, ordinarily within one month.

However, if the bench is of the opinion that Pre-grant opposition has merit and the application shall be refused or amended, a notice is given to the applicant along with a copy of the representation. Upon receiving the notice, the Applicant is required to file his response along with the evidence (if any) within three months from the date of notice.

On consideration of the submissions made by the parties, and after hearing, if so requested, the Bench may:

  • Reject the Opposition; or
  • Require the complete specification and other documents to be amended; or
  • Refuse to grant a patent on the application by passing a speaking order under Section 15 of the Patent Act, 1970, ordinarily within one month from the completion of above proceedings.

Further, in case of an impasse between the two members, the Controller shall nominate a third member and the majority decision will be treated as final.

Conclusion

The proposed amendment will keep a check on the discretion of Controller in deciding the pre-grant opposition and will bring more transparency in the procedure.

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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