In today’s dynamic environment nothing is constant. Companies are in conflict with each other to make their product superior than that of the other and to increase sale of their product. Research and Development departments are formed in each company that focuses on inventing new products. Large investments are made in these departments. Thus, the companies in return expect that they can beneficial return for their investments. This brings in the role of patents. Similarly provisions are made in to oppose the grant of patent and to protect the interests of opponent.
Meaning of Patent
Patent means giving the exclusive right to use the invention which is made by a person and to exclude others from using the same. Invention generally means when a person makes something new which no person has made before and is beyond the thinking of an ordinary person with the knowledge available.
Section 2 (1) (m) of The Patent Act, 1970 tells us about the definition of patent. It says that “patent” means a patent for any invention granted under this Act. An invention must be capable of the industrial application and must have not be known before anywhere in the world.
Need for Patent Protection
The patent protection is generally been provided so that it can encourage people to invent new things for the benefit of the society. They can make money by selling their invention in the market exclusively without anyone interference. A patent is granted under the Patent Act, 1970 for a period of 20 years till then they can take benefit of their invention and can have monopoly over it.
Grounds of Opposition under Patent Act, 1970
As we know that patent creates an exclusive right over an invention, it is only after the compliance of some requirements the patent protection can be granted. Even if the patent protection is granted still it doesn’t give guaranteed protection as it can be revoked. There are two types of opposition that can be made under this Act. Section 25 specifies them which are-
- Pre-Grant Opposition
- Post-Grant Opposition
Section 25(1) specifies the ground on which patent can be opposed before it is granted. It specifies that “any person” can file for the opposition in case of Pre-Grant Opposition. The opposition can be filled after the publication of the patent but before the time till the patent is granted. The application has to be made to the Controller. The patent cannot be granted till 6 months of publication so a person can file opposition.
Section 2(1)(s) specifies that “person” includes the Government. This provision has been made for the welfare of people at large, so that they cannot be restrained from using a product on which they have a right to use and sell.
Now the grounds on which pre-grant opposition can be made are-
- Section 25(1)(a) -The applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims.
This ground tells us that when the applicant has obtained the patent wrongfully from a person then the same can be taken as a ground of opposition. In such a case the Controller can refuse to grant the patent or can order to amend the specification which has been wrongfully obtained by that applicant.
- Section 25(1)(b)- The invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim-
(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document, Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of Section 29.
This ground of opposition specifies that if the application of patent which has been made has already been published by some other person before the date on which the applicant made it in India. If the invention has already been published in India or elsewhere around the globe then also the patent cannot be granted.
- Section 25(1)(c) – It is claimed in a claim of a complete specification published on or after priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim.
This ground of opposition tells us that if the invention claimed by the applicant has already been claimed in any other specification of which the priority date is much earlier than the applicant specification then the patent cannot be granted.
- Section 25(1)(d)- It is claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.
This specification tells us that if the invention which is claimed by the applicant is already popular among people and people have knowledge about it then patents cannot be granted on it. We have to see with the perspective of India. The amount of population is not necessary. Even if a single person knows about it then the patent cannot be granted on it.
This provision is made for the general welfare of people so that they cannot be restrained from using any good on which they have a right to use.
- Section 25(1)(e)- The invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim.
This involves the case where the claim lacks an inventive step which means that it is neither new nor novel. To claim a patent this is a necessary requirement that the invention must not have been anticipated before. If it is obvious and involves only some few technical changes to the old technology then the same cannot be denoted as invention.
We have to see that the person who is an expert in that relevant field could have thought of making that invention or not. If he could not have anticipated it, then the same can be denoted as an invention.
If a person was under an obligation to not disclose anybody about the patent but still he discloses, then such disclosure cannot be held as publication.
- Section 25(1)(f) – Te subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act.
This provision tells us that if the claim of the applicant is not an invention or is under a subject matter which cannot be patented, then the patent cannot be granted on it. Section 3 tells us about some subjects such as if invention is against natural laws, morality, public order or if it is only a discovery and not invention etc. Section 4 tells us the invention which relates to atomic energy cannot be patented as well.
- Section 25(1)(g) – The complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed.
This provision tells us that the applicant is required to properly describe his invention in complete specification and he also has to describe the method of using the same. So, if he fails to do so then the patent cannot be granted.
- Section 25(1)(h) – The applicant has failed to disclose to the Controller the information required by Section 8 or has furnished the information which in any material particular was false to his knowledge.
This ground tells us about the responsibility which has been put upon the applicant under Section 8 of the Act. Section 8 says that the applicant needs to specify to the Controller about any application which he is prosecuting in a foreign country with respect to the same or substantially same application. If he doesn’t tell this to the Controller then this can be taken as a ground of opposition. If he fails to disclose any important fact which was within his knowledge or presents the fact wrongly, then also the patent cannot be granted.
- Section 25(1)(i) – that in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title.
This provision tells us that application has to be made within the period of 12 months from the date when the first application for patent was made in a country which is Convention signatory. This rule applies in the cases of convention application only.
- Section 25(1)(j) -that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.
The specification has to mention all the details about the invention correctly and has to specify all the necessary things required to be mentioned.
- Section 25(1)(k) – that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
If the claim is based upon the knowledge of indigenous community then the patent cannot be granted upon it. The reason is that first of all any person can know about that claim and this provision is also made to protect the interests of indigenous communities.
Section 25(2) specifies about the Post-Grant Patent. All the grounds which are given under the pre-grant patent are the same for post-grant patents as well. There are only some procedural differences between the two.
The Post-Grant Opposition can only be made by the “person interested”. Section 2 (1)(t) specifies that the person interested includes a person engaged in, or in promoting, research in the same field as that to which the invention relates. The application for the opposition has to be filed within the period of one year from the date from which the publication of the patent has been made.
The notice regarding the opposition has to be given to the Controller.
Subsequent Procedure for Post- Grant Opposition under Patent Act, 1970 and Patent Rules, 2003
Now Section 25(3) specifies that after the notice regarding the opposition is given, it is the duty of the Controller to form an Opposition Board under Rule 56 of Patent Rules, 2003. Rule 55A of The Patent Rules, 2003 specifies that notice of opposition has to be given to the Controller. Rule 57 of Patent Rules specifies that there are relevant documents that are required to be submitted to the Board which consists of all the facts of the case, the relief which is claimed, evidence in support of the claim etc.
Rule 58 specifies that patentee has to file a reply within two months and then under Rule 59 opponent files reply within one month. Then under Rule 62 the date of hearing is fixed.
The duty of the Board is to conduct an examination. The Board has to provide recommendation to the Controller with regard to the case. The Controller has to consider the recommendation while giving the decision.
Under Section 25(4) the Controller after giving both the parties an opportunity to be heard has to give his decision. He can order that the patent has no fault and can be maintained or he can order to amend the patent or he can take away the right of patent.
In case of Pre-Grant Opposition the opportunity of hearing which is given to the opponent wholly depends on the will of the Controller. Controller may allow him to be heard or not, it depends upon the case to case. But it is not mandatory for the Controller to hear the opponent in case of Pre-Grant Opposition. That is why the procedure of Post-Grant is much more lengthy and complex as compared to Pre-Grant Opposition.
The aggrieved party can file an appeal to the Appellate Board under Section 117A of the Act from the decision under Section 25(4) of the Act.
Dr.(Miss) Snehlata Gupta v. Union of India and Ors.
In this case the controversy was regarding what could be taken as the date for the grant of patent. The Pre-Grant Opposition was filled. However the opposition failed but the certificate of patent was given on a later date. The Court held that it is not relevant that the certificate was given later for deciding the date of patent grant. What was relevant was that opposition failed and the applicant complied with all the requirements under the Act. So the date when opposition failed was the date of patent grant.
The Regents of the University of California v. Union of India and Ors.
In this case it was observed that in case of pre-grant opposition there is no requirement to submit opposition by the way of affidavit. What is necessary is that opposition must be in writing. There must be evidence but such evidence need not be supported by an affidavit. The pre-grant opposition forms the part of the examination which is taken up by the Controller. Rule 55(1A) of Patent Rules specifies that the patent cannot be granted before 6 months of publication of application so that parties can oppose the same. So pre-grant forms an important part of the examination.
M/S Ucb Farchim Sa v. M/S Cipla Ltd. & Ors
In this case the difference between pre grant opposition and post grant opposition was given. In case of pre grant opposition, it is filled under Section 25(1) and any person can file the opposition. It is a part of the examination by the Controller. Whereas in case of post grant opposition it is filled Under Section 25(2) and can only be filled by a person interested. In this Opposition Board is formed which recommends Controllers.
J.Mitra & Co.Pvt.Ltd v. Asst. Controller Of Patents
In this case it was observed that the post-grant opposition was not there before in the Patent Act. The only option available to the person interested was to apply for pre-grant opposition. However, after 2005 Amendment Section 25(2) was brought which allowed the option to oppose the patent even after it was granted. Now if the patent is granted to the applicant, still it would not act as a guarantee that the patent cannot be revoked. An appeal can be made to the Appellate Board under Section 117A of the Act from the decision under Section 25(4).
Novartis AG V. Union of India
In this case it was observed that a mere discovery cannot grant an applicant a patent. It has to be shown that the claim doesn’t just involve discovery but has enhanced the efficacy of the product. There has to be some sort of inventive step which has made the product much better in use.
If a person has to invoke the ground of opposition that the product was already in use in India then the proof of it should be available. Secret use cannot be taken into consideration such as in cases where the servant was under obligation not to disclose the invention, even then if they disclose it then the same cannot amount to publication.
We can conclude that all the grounds of opposition are the same under both pre and post grant opposition. The main difference between the two is that under pre-grant opposition it has wider scope as any person can file opposition. In case of post-grant opposition only a person interested within 1 year of publication of grant of patent can file the opposition that is why it is narrow in scope. The procedure of trial under post- grant involves the forming of the Opposition Board and then examining the examination. Whereas in pre-grant opposition it only forms part of examination by Controller that patent should be granted or not.
- Dr. V. K. Ahuja, Law Relating To The Intellectual Property Rights, Lexis Nexis, 2nd Edition, 2015
Q1. What is a patent? Why is there a need for patent protection?
Q2. Explain Pre-Grant Opposition under Patent Act, 1970?
Q3. Explain Post-Grant Opposition under Patent Act, 1970?
Q4. Explain the difference between Pre and Post Grant Opposition?
Q5. Explain the procedure of trial under Post-Grant Opposition?
 W.P. (C) No. 3516/2007
 W.P.(C) 1163/2017 and CM APPL. 38867/2017
 W.P.(C) No. 332/2010
 S.L.P. (C) No. 15727/2008
 (2007)4 MLJ 1153
 (1970) RPC 103