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Information Bank

Patents

Pre-Grant Opposition

The provisions for pre-grant opposition of patents are provided under Section 25(1) of the Patent (Amendment) Act, 2005. The criteria, purpose, and steps for initiating an opposition proceeding in India are defined in this section.

If a patent application has been published but not yet granted, “any person” may object to the grant of a patent by filing Form 7A as specified under the Second Schedule of the Patent Rules, 2003, on the grounds stipulated in Section 25(1) of the Patents Act, 1970. In accordance with this clause, once a patent application is published, any person, third party or Government may contest such application for the grant of the patent and submit written opposition to the controller of Patents; prior to the issuance of the patent.

With the Patents (amendment) Act of 2005, the legislature expanded the locus standi for submitting a pre-grant opposition by allowing “Any Person” rather than “Person Interested” to challenge the grant of a patent. However, it must be noted that opposition cannot be made merely on the basis of the abstract; therefore, the complete specification of the invention must be necessarily acquired from the official website by paying a requisite fee.

Grounds for Pre-Grant Opposition:

The comprehensive list of grounds for the pre-grant opposition of a patent application is provided in clauses (a) through (k) under Section 25(1). They are:

  1. Wrongful procurement of the invention.
  2. Prior publication corresponding to the invention.
  3. Prior claim corresponding to the invention.
  4. Prior knowledge or use of the invention.
  5. Lack of an inventive step in the invention/ Obviousness.
  6. The invention falls under the purview non-patentable subject matter
  7. Insufficient Description of the invention.
  8. Non-disclosure/ false disclosure of the details required under Section 8, in the application.
  9. Time stipulations are not met by the convention application.
  10. The origin/ source of the biological material (if used) has not been disclosed or incorrectly mentioned.
  11. The invention is inspired by traditional knowledge.

Pre-grant opposition is significant because it acts as a safeguard to confirm the legitimacy of patent applications before patents are granted to them. Moreover, pre-grant opposition takes a business-like approach, with opponents seeing it as a prime opportunity to contest the protective privileges associated with a published patent application, if it is found to have a dubious nature.