Patent Prosecution in India: Pre-Grant Opposition

Patent Prosecution in India

patent pre-grant opposition in IndiaAccording to the patents act, 1970, any time after the publication of a patent application, but before the grant of a patent, any person interested may file an opposition in writing (pre-grant opposition) to the Controller against the grant of a patent application at an appropriate patent office on any of the grounds mentioned under section 25(1).

A pre-grant opposition shall include a statement and evidence, if any, in support of such opposition in writing, with a request for a hearing. The controller considers the pre-grant opposition only after filing a request for examination for the patent application.

On consideration:

If the Controller is of the opinion that the patent pre-grant opposition is devoid of any merit, an opportunity of hearing shall be provided to the opponent, if requested. However, after hearing, if the Controller is of the same opinion, the pre-grant opposition is refused with the issue of order within one month.

If the Controller is of the opinion that the pre-grant opposition has any merit and the patent application shall be refused or amended, a notice is issued to the patent applicant along with a copy of the pre-grant opposition. The patent applicant files a reply statement for the pre-grant opposition within 3 months from the date of the notice. The Controller considers the reply statement filed by the applicant and may either refuse the grant of a patent application or ask for amendments to complete specification. Afterward, the Controller again considers the earlier-filed pre-grant opposition, and the reply statement filed by the patent applicant together during the hearing, and may allow the grant of the patent application, if satisfied or refuse the grant of a patent application on consideration of the pre-grant opposition under sub-section (1) of section 25 of the patents act, 1970 with the issue of an order.

Section 25_Opposition to the patent—(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of a patent on the ground—

(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—

(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January 1912; or

(ii) in India or elsewhere, in any other document:

Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or subsection (3) of section 29;

(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;

(d) that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act or is not patentable under this Act;

(g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;

(h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

(i) that in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;

(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;

(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,

but on no other ground, and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed.

About the Author: Mr. Shashi Kant Verma, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at support@ipandlegalfilings.com.

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