INTRODUCTION:
Indian Patent Act 1970, offers provision to community to raise objection against grant of patent by
filing opposition with patent office. There are two types of oppositions:
1) Pre-grant opposition: Opposition can be done before the grant of patent.
2) Post-grant opposition: Opposition can be done after the grant of patent.
Here, we are focusing on pre-grant opposition in India.
PRE-GRANT OPPOSITION:
A Pre-Grant opposition in India is described in Section 25(1) of the Patents Act, 1970. This section
explains the meaning, grounds and procedure for commencing an opposition proceeding in India.
Where an application for a patent has been published but a patent has not been granted, “any
person” may oppose the grant of patent by filling Form 7A mentioned under Second Schedule of the
Patent Rules, 2003, on the grounds listed in Section 25(1) of the Patent Act, 1970.
Grounds for opposition under section 25 (1) of the Act:
a) Invention obtained wrongfully.
b) Prior publication.
c) Prior claiming.
d) Publicly known or used in India before filing.
e) Obviousness and clearly does not involve any inventive step.
f) Non patentable subject matter as per Act.
g) Insufficient disclosure.
h) Failure to disclose information under section 8 of the Act.
i) In case of a convention application, the patent application in India was not filed within 12 months of
filing the first application in the convention country.
j) Non-Disclosure or wrongful disclosure of the source or geographical origin of the biological
material as used in the invention.
- The representation for pre-grant opposition must be filed at patent office at which application is filed. Representation must include statement and supporting evidences.
- After considering the representation, if the Controller finds merit in application then he shall send notice to applicant.
- The applicant is then required to submit his own statement and evidence, if any, within a 3-month from the date of the notice and a copy must sent to opponent.
- If requested by any party for hearing, the Controller shall issue notice of hearing to both parties.
- Upon considering all statements and evidences, the Controller may:
- Reject the pre-grant opposition and Grant the patent or;
- Require the amendment of the patent specification or other documents after which the patent can be granted or;
- Accept the pre-grant opposition and Refuse the patent.
- The final decision must be communicated to the applicant in the form of a speaking order within 1 month from the completion of the above-mentioned proceedings.
After the decision of the Controller, if the decision is in favour of opponent, then there is a provision
for applicant to appeal against the order. Earlier, such appeal can be made to IPAB. Now the IPAB
board is abolished so applicant can appeal to High Court. There is no provision for appeal to opponent
in case of grant of patent. The opponent can either file Post-grant opposition or Revocation of patent
under Patent Act, 1970.
Landmark cases of pre-grant opposition in India:
1) In Novartis vs Cipla, 2011, a patent application was filed by Novartis in 2005, for “Dispersible
tablets comprising Defracirox” at Chennai office. Cipla filed a pre-grant opposition under sections
25(1) (e), 25(1) (f) and 25(1) (h) of the Patents Act. The representation was allowed by the Controller
after a hearing and the case was decided.
In this decision, the Controller concluded that the claims were obvious in view of the cited art because
the claims read upon the previously disclosed ranges. Additionally, the claimed composition merely
had additive properties (which is expected from a mere admixture) and hence non- patentable under
section 3(e) of the Act. Cipla won the case.
2) In Hindustan Lever Ltd. v. Godrej Soaps, 1996, two patent applications were filed by Hindustan
Lever Ltd. in respect of an invention relating to detergent bars suitable for personal bathing or fabric
washing and for the improved process for preparing detergent bars. Both applications were published,
after which Godrej Soaps filed opposition under grounds (b), (d), (e), (f) and (g) mentioned under
section 25(1). After the hearing, the controller ordered for amendment of the specifications. The
applicant amended their specifications and the opposition was dismissed as the opponents were unable
to establish opposition to the satisfaction of the controller.
By Karuna Mahajan