Pre Grant Opposition

PRE GRANT OPPOSITION

PRE GRANT OPPOSITION

Most frequent questions and answers

What is Pre grant Opposition?

Pre grant opposition gives any person the opportunity to oppose the grant of a patent after the publication of the patent application.

Section Applicable for Pre grant Opposition

Section 25(1) of the Patent Act, 1970.

The Section 25(1) of the Patent Act, 1970 reads: “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 various grounds.”

Rules Applicable for Pre grant Opposition

Rule 55

Opposition to the patent

(1) Representation for opposition under sub-section (1) of section 25 shall be filed in Form 7(A) at the appropriate office with a copy to the applicant and shall include a statement and evidence, if any, in support of the representation and a request for hearing, if so desired.

(1A) Notwithstanding anything contained in sub-rule (1), no patent shall be granted before the expiry of a period of six months from the date of publication of the application under section 11 A.

2) The Controller shall consider such representation only when a request for examination of the application has been filed.

3) On consideration of the representation, if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any, in support of his application within three months from the date of the notice, with a copy to the opponent.

(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, bypassing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.

Rule 56

Constitution of Opposition Board and its proceeding

(1) On receipt of notice of opposition under rule 55A, the Controller shall, by order, constitute an Opposition Board consisting of three members and nominate one of the members as the Chairman of the Board.

(2) An examiner appointed under sub-section (2) of section 73 shall be eligible to be a member of the Opposition Board.

(3) The examiner, who has dealt with the application for patent during the proceeding for grant of patent thereon shall not be eligible as member of Opposition Board as specified in sub-rule (2) for that application.

(4) The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them.

Rule 57


Filing of written statement of opposition and evidence

The opponent shall send a written statement in duplicate setting out the nature of the opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, along with notice of opposition and shall deliver to the patentee a copy of the statement and the evidence, if any.

Rule 58

Filing of reply statement and evidence

(1) If the patentee desires to contest the opposition, he shall leave at the appropriate office a reply statement setting out fully the grounds upon which the opposition is contested and evidence, if any, in support of his case within a period of two months from the date of receipt of the copy of the written statement and Opponent’s evidence, if any by him under rule 57 and deliver to the opponent a copy thereof.

(2) If the patentee does not desire to contest or leave his reply and evidence within the period as specified in sub-rule (1), the patent shall be deemed to have been revoked.

Rule 59

Filing of reply evidence by opponent

The opponent may, within one month from the date of delivery to him of a copy or the patentee’s reply statement and evidence under rule 58, leave at the appropriate office evidence in reply strictly confined to matters in the patentee’s evidence and shall deliver to the patentee a copy of such evidence.

Rule 60

Further evidence to be left with the leave of the Controller

No further evidence shall be delivered by either party except with the leave or directions of the Controller:

Provided that such leave or direction is prayed before the Controller has fixed the hearing under rule 62.

Copies of documents to be supplied

(1) Copies of all documents referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition and authenticated to the satisfaction of the Controller, shall be simultaneously furnished in duplicate unless the Controller otherwise directs.

(2) Where a specification or other document in a language other than English is referred to in the notice, statement or evidence, an attested translation thereof, in duplicate, in English shall be furnished along with such notice, statement or evidence, as the case may be.

Rule 62

Hearing

(1) On the completion of the presentation of evidence, if any, and on receiving the recommendation of Opposition Board or at such other time as the Controller may think fit, he shall fix a date and time for the hearing of the opposition and shall give the parties not less than ten days’ notice of such hearing and may require members of Opposition Board to be present in the hearing.

(2) If either party to the proceeding desires to be heard, he shall inform the Controller by a notice along with the fee as specified in the First Schedule.

(3) The Controller may refuse to hear any party who has not given notice under sub-rule (2).

(4) If either party intends to rely on any publication at the hearing not already mentioned in the notice, statement or evidence, he shall give to the other party and to the Controller not less than five days’ notice of his intention, together with details of such publication.

(5) After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Opposition Board, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.

Rule 63

Determination of costs

If the patentee notifies the Controller that he desires to withdraw the patent after notice of opposition is given, the Controller, depending on the merits of the case, may decide whether costs should be awarded to the opponent.

Who Can File Pre grant Opposition?

Any person may file a Pre-Grant opposition by way of representation to the Controller in Form 7A against the grant of Patent. The representation shall include a statement and evidence, if any, in support of such representation and a request for hearing, if so desired. The Controller shall consider such representation only when a request for examination of the application has been filed.

When is Pre Grant opposition Filed?

It can be filed anytime after the publication of the patent application but before the grant of patent.

Note: No patent is granted before the expiry of six months from the date of publication.

What is the fee for filing Pre Grant Opposition?

There is no fee for filing pre grant oppoistion.

Grounds Of Pre grant Opposition

According to section 25(1) the Patent Act, 1970 following are the grounds for pre-grant opposition.

  • Invention obtained wrongfully.
  • The invention claimed in the complete specification has been published before the priority date in India or elsewhere in any document.
  • The invention claimed in the complete specification has been published on or after the priority date of the application filed in India.
  • The invention claimed was publicly known or publicly used in India before the priority date.
  • The invention claimed was publicly known or publicly used in India before the priority date.
  • The invention claimed is obvious and does not involve an inventive step.
  • The subject of any claim is not an invention or is not Patentable under the Act.

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