The procedure required to be followed to file for pre-grant opposition is established under Rule 55 of the Patents Rule, 2003. On the basis of the grounds stipulated under section 25(1) of the Patents Act, any person may file a pre-grant opposition to the issue of a patent, by making a representation to the Controller of Patents. Nonetheless, a representation for opposition shall only be taken into consideration, when a request for examination of the patent application has already been filed with the IPO.
Rule 55(1A) explicitly states that no patent shall be issued before the expiry of 6 months from the date of publication of its application; which allows the third parties enough time to file for opposition before the patent is actually granted. The procedure to file for pre-grant opposition is as follows:
- The opposing party must file a representation for the opposition in form 7(A) which requires no fee. It must be submitted to the appropriate office with a justification for the opposition along with supporting evidence. A request for a hearing may also be made at the discretion of the opponent.
- If the contentions offered in the representation are unsatisfactory, the Controller will reject the opposition, by issuing a spoken order. Whereas, if the contentions are proven to be genuine, the Controller shall notify the applicant and provide them with a copy of the representation.
- After being notified and receiving the representation, the applicant, as per their desire, may choose to respond by submitting their statement and documents in corroboration with their application within 3 months of being notified by the Controller of Patents. The opponent must be provided with a copy of all the aforementioned documents.
- After taking into consideration, the statements and supporting evidence from both parties, and after hearing the parties, if requested, the Controller, by passing a speaking order, ordinarily within a month from receipt of the applicant’s response, may either:
- Reject the Representation for Opposition and grant the patent, or
- Accept the Representation for Opposition and direct the applicant to make amendments in the complete specification of their application to the Controller’s satisfaction before proceeding further with the patent grant.
Conclusion:
The procedure for pre-grant opposition is one of the best methods to filter out patent applications before a patent grant. Since this opposition method is free of charge, there is a likelihood that corporations may abuse this feature with malicious intent to target their competitors. Nevertheless, frivolous oppositions can easily be eliminated, as the procedure entails numerous checks and balances, with every application undergoing thorough evaluation.
