A Pre-Grant opposition in India is clearly explained in Section 25(1) of the Patents Act, 1970 which deals with the Pre-Grant Opposition proceeding. It explains the meaning, grounds and procedure for initiating an opposition proceeding in India.

‘Opposition’ is a word commonly heard and loosely used. The word in itself is an expression which symbolizes disagreement or unacceptance. An Opposition Proceeding in India is an administrative process which enables third parties to challenge the validity of a patent, under the Indian patent law.

The Patents Act, 1970 (hereinafter ‘the Act’) allows for ‘any person’ to oppose the grant of the patent. In India, there are two kinds of opposition proceedings for patents- Pre-Grant Opposition and Post-Grant Opposition. In this post, Pre-Grant Opposition in India will be dealt with in detail.

What is Pre-Grant Opposition in India?

As the name rightly suggests, this opposition is initiated before a patent is granted in India. A patent application is open to pre-grant opposition, from the date of being published in the patent journal up to its grant. This opposition can be initiated by third parties or even the Government, among others. The opposition request, under this leg, includes a statement along with relevant and necessary evidence supporting the opposition request.

While this delays the grant of the patent, it is nevertheless an effective tool. Through this process, the patent application is tested and tried for its validity and genuineness. This process is a defensive and fallback strategy adopted to avoid questionable patent applications before granting the patent right.

What are the grounds of filing a Pre-Grant Opposition in India?

The grounds are listed under Section 25(1) from (a) to (k). This provision also specifies that no other new or separate ground(s), other than those listed, can be framed. The following are the grounds of Pre-Grant Opposition in India:

  1. Wrongfully obtained the invention.
  2. Anticipation by prior publication.
  3. Anticipation by prior date, Prior claiming in India.
  4. Publicly known or publicly used in India.
  5. Obviousness and clearly does not involve any inventive step.
  6. Non-patentable invention as per the Act.
  7. Insufficient and unclear description of the invention.
  8. Failure of disclosure under Section 8 (in case of filing a patent outside India) of the Act or furnished false information.
  9. In case of a convention application, the patent application in India was not filed within 12 months of filing the first application in the convention country.
  10. Non-disclosure or wrong mention of the source or geographical origin of the biological material as used in the invention.
  11. The invention is anticipated as traditional knowledge of any local or indigenous community in India or anywhere in the world.

What is the procedure to file a Pre-Grant Opposition in India?

  • In India, to initiate a Pre-Grant Opposition, the aggrieved party must submit their opposition representation to the Controller in writing. This submission may be supported with additional and relevant evidence to substantiate the claims made therein. The pre-grant opposition representation (hereinafter ‘representation’) shall be considered by the Controller only when a request for examination of the patent application has been filed.
  • Upon consideration of the representation, if the Controller finds merit in the representation, the Applicant (of the patent application) is notified of the same. Once the Applicant receives the notice, he/she may file their statement and evidence, if any, in support of the patent application. This is to be done within three months from the date of the notice and a copy sent to the Opponent.
  • A hearing- if requested by the parties, may be appointed by the Controller to decide the matter ahead.
  • Finally, the Controller will consider the submissions made by both the Applicant and the Opponent and decide the matter accordingly. If the Controller finds merit in the opposition, he/she may refuse the grant of the patent. On the contrary, if the Controller finds no merit in the opposition, he/she may grant the patent directly or suggest some amendments and grant the patent accordingly.

Either way, the final decision must be communicated to the Applicant in the form of a speaking order within one month from the completion of the above-mentioned proceedings.