Patent Opposition in India: Procedure, Grounds, and Strategy Under the Patents Act, 1970

Patent opposition in India is an important legal process that allows a patent application or granted patent to be challenged if it does not meet the requirements under the Patents Act, 1970. India’s dual pre-grant and post-grant patent opposition system is TRIPS-compliant and designed to prevent invalid patents. This article explains the procedure, grounds for opposition, legal strategies, and the role of patent opposition in protecting innovation and maintaining a fair patent system in India.

Introduction

Innovation is important for the growth of every country. To encourage the people to develop new inventions, the law grants them protection for their invention under the Patents Act, 1970 (hereinafter referred to as ‘the Act’) for a limited period. Patent registration gives the inventor exclusive rights to sell, make, use, or license their invention. However, not every invention receives patent protection, these include inventions that are not novel, already exist, or fail to satisfy the legal requirements prescribed under the Act. 

To prevent such patents from being granted, the Act provides the legal mechanism of patent opposition. Patent opposition allows any third-party to challenge the patent application before it is granted or after it has been granted (within specified period). Patent law in India helps to ensure that only genuine patent applications are granted protection. It also protects public interest, promotes fair competition, and prevents the misuse of patents rights.

Meaning of Patent Opposition

The Indian Patents Act, 1970, offers an opportunity for any interested party to raise patent opposition. It allows the third-party to challenge the patent application before the grant (pre-grant opposition) and after the grant (post-grant opposition). The purpose of opposition is to ensure that only genuine inventions fulfilling the requirements of patentability receive protection.

By filing the patent opposition, stakeholders can challenge those inventions that lack novelty, industrial application or do not meet the patentability criteria. The primary objective is to ensure fairness, prevent the grant of invalid patents and support genuine inventors and innovations.

Types of Patent Opposition in India

The Indian patent system recognizes two kinds of opposition:

(i) Pre-grant Opposition

Section 25(1) of the Act governs pre-grant opposition, which is essentially a representation considered during examination. This may be filed in Form 7A after the publication of the patent application under Section 11A, but before the Controller of Patents (Controller) grants the official patent. Any person may oppose the application on the various grounds provided under the Act. 

However, the opposition must be bona fide and should not be filed with an intention to delay the patent process. In Dr. Snehlata C. Gupte v. Union of India (2012), the Delhi High Court clarified the date of grant of a patent and condemned successive oppositions as abuse of process that delays grants. 

Note: Pre-grant opposition requires payment of the prescribed fee (₹4,000 for natural persons/start-ups/small entities/educational institutions and ₹20,000 for others).

Procedure for Pre-grant Opposition

• Publication of the Patent Application: The application is published 18 months after the filing date or priority date, (whichever is earlier) unless the applicant requests early publication. Once the application is published, it becomes available for public inspection, and any person can review its content.

• Submission of the Representation of Opposition: The opponent makes a submission in the form of representation including a statement of case and facts, evidence and any other material.

• Review by the Controller: The Controller considers the representation only after a request for examination (RFE) of the patent application has been filed. Thereafter, the Controller first examines whether a prima facie case is made out in the representation.

• Applicant’s Response: On receiving the copy of the opposition (along with the notice) sent by the Controller, the applicant may submit his reply along with the supporting evidence within 2 months (updated) of the date of notice.

• Decision Making: The Controller gives both parties an opportunity of presenting their case during hearing. Thereafter, the Controller decides whether to reject the application, require amendments to the patent claims or grant the patent.

(ii) Post-grant Opposition

Post-grant Opposition is governed by Section 25(2) of the Patents Act, 1970. The opposition may be filed in Form 7 by any person interested within one year from the date of publication of the grant of the patent. As per Section 2 (1)(t), “person interested” refers to someone who is engaged in, or in promoting, research in the same field in relation to the invention. 

The grounds of post-grant opposition are the same as those of pre-grant opposition. The opposition is decided by the Controller of patents after receiving recommendations from an opposition board constituted under the Act. 

This procedure is different from patent revocation under Section 64, where a petition is to be filed before the High Court to cancel the granted patent. In Dr. Aloys Wobben v. Yogesh Mehra & Ors. (2014), the Supreme Court held that the person cannot pursue both a post grant opposition and a revocation petition under Section 64 at the same time against the same patent. The court clarified that the opponent must choose one legal remedy, thereby preventing multiple proceedings on the same issue. 

Procedure for post-grant opposition

Step 1: Notice of Opposition: Interested party may file the notice of opposition together with the written statement and supporting evidence.

Step 2: Formation of Opposition Board: The Controller, by order, constitutes a three-member independent Opposition Board. The Board carefully examines the documents, pleadings and evidence submitted by both parties.

Step 3: Filing of Reply by Patentee: If the patentee desires to contest the opposition, he may file his reply containing the grounds on which the opposition is contested and evidence within 2 months from the date of receipt of opponent’s written statement.

Step 4: Filing of Evidence by Opponent: Then, the opponent may, within 1 month, submit evidence in support of his opposition strictly confined to matters in patentee’s evidence.

Step 5: Recommendation by Board: Opposition Board examines all documents submitted, reviews the case and finally makes the recommendations to the Controller of Patents.

Step 6: Decision making hearing: The Controller conducts a hearing where both the patentee and the opponent are given an opportunity to present their arguments. After considering the recommendations of the Board and the evidence submitted by both parties, the Controller may maintain the patent, direct amendments to the patent or revoke the patent.

Grounds to Object a Patent Application

1. 1. Wrongful obtaining of the Invention: A patent may be opposed if the applicant has wrongfully obtained the invention from the other person. This ground protects the right of the actual inventor and prevents dishonest claims over inventions.
   2. Prior Publication: An opposition may be filed if the invention was already published before the priority date of the patent application in India or any other country.
   3. Prior Claiming: A patent may also be opposed if the invention has already been claimed in another patent application having an earlier priority date.
   4. Prior Public knowledge/use: If the invention was publicly known or publicly used in India before the priority date, then it cannot be considered a new invention.
   5. Lack of Inventive Step (Obviousness): As per Section 2(1) (ja) of the Act, an inventive step means a feature of invention that involves technical advancement, having economic significance, or both, and is not obvious to a person skilled in the relevant field. If the invention is only for simple modification without any technical advancement, it may be opposed on this ground.
   6. Non- Patentable Subject Matter: A patent may be opposed if the invention falls within the categories excluded from patent protection under Section 3 and 4 of the Patents Act, 1970.
   7. Insufficient description: If the complete specification does not give clear and sufficient description of the invention or its method.

• Failure to disclose information: If the applicant supplied false information or failed to disclose information as per the requisition of Section 8 of the Act.

• Convention application not filed: If the applicant failed to file the convention application within 12 months from the date of the first publication made in a convention country.

1. Non-disclosure of Source: If the source or geographical origin of biological material used for the invention is not disclosed or is wrongly mentioned in the complete specification.
2. Traditional Knowledge: A patent may be opposed if the invention is based on traditional knowledge already available within any local or indigenous community.

Strategy under the Patents Act, 1970

• Choose the right stage of opposition: The opponent should decide whether to file a pre-grant opposition or a post grant opposition based on the stage of the patent application. Filing at the appropriate stage can improve the chance of success.
• Strong Evidence: An opponent should support his claim by reliable evidence such as prior patents, research papers, publications, and expert opinions. Strong documentary evidence makes the opposition more effective.
• Monitor Published applications: One should regularly monitor the published applications by going through the Patent Journals.
• Ensure Compliance with Legal Requirements: The applicant should comply with the provisions of the Act, especially Sections 8 and 10, by making complete disclosures and preparing a clear patent specification. If patent disputes cannot be resolved through opposition proceedings, the parties may resort to litigation before the appropriate authorities. 
• Follow the Prescribed Procedure: Both the applicant and the opponent should submit replies, evidence, and documents within the prescribed time limits and follow the procedure laid down under the Patents Act, 1970 and the Patents Rules, 2003.

Conclusion

The Patents Act 1970 provides a robust system to ensure that only deserving inventions receive patent protection. The provisions for pre-grant and post grant opposition help prevent the grant of invalid patents while encouraging genuine innovation. Anyone planning to oppose a patent should identify valid grounds, collect relevant prior art, supporting evidence, and file the opposition within the prescribed time. Similarly, patent applicants should prepare complete and accurate patent applications, respond to objections, and regularly monitor the status of their applications. Overall, the patent opposition system creates a fair balance between protecting inventor’s rights and safeguarding public interest, making it an important part of India’s patent framework.

Author: Name: Ishika Singhal, B.A.LL. B (H), 3rd year, Amity University Gwalior, AUMP

References

1. The Patents Act,1970 (Act No. 39 of 1970).
2. The Patents Rules, 2003.
3. Dr. Aloys Wobben v. Yogesh Mehra & Ors. (2014) 15 SCC 360.
4. Dr. Snehlata C. Gupte v. Union of India, AIR 2012 DELHI 182.