INTRODUCTION
The Indian Patents Act, 1970 ('Act'), under Section 25, provides mechanisms for third parties to challenge patent applications or grants, ensuring only valid inventions receive protection. This framework balances inventors' rights with public interest by allowing scrutiny for novelty, inventive step, and compliance with patentability criteria. Pre-grant and post-grant oppositions, governed by the Patents Rules, 2003 (as amended), promote transparency post-publication. The Act establishes a dual mechanism of pre-grant and post-grant oppositions that promotes public scrutiny post-publication while balancing innovator rights.
TYPES OF OPPOSITION
Indian law distinguishes pre-grant opposition under Section 25(1), open to any person, from post-grant opposition under Section 25(2), limited to a person interested.
Pre-grant opposition targets published applications before grant, on grounds including wrongful obtainment, prior publication/claiming, public knowledge, obviousness, non-patentable subject matter, insufficient disclosure, non-compliance with Section 8, and traditional knowledge anticipation. However, such a challenge must be bona fide as outlined by the Delhi High Court in the matter Dr. (Miss) Snehlata C. Gupte v. Union of India, (2012). The Hon'ble Court upheld the right to file multiple pre-grant oppositions by "any person" if bona fide, rejecting claims of abuse despite serial filings. Further, in the case of Novartis AG versus Natco Pharma Limited & ANR (2024), the Court vide its order addressed a critical issue of the extent of engagement of an opponent by emphasizing that the right to hearing under Rule 55(5) applies only to the Opposition process, not the Examination process. Thus, the court affirmed that the Examination and Opposition process, though statutorily structured to proceed simultaneously, is independent and separate.
Post-grant opposition, filed within one year of grant publication, requires a person interested, one with a direct commercial or research stake affected by the patent. Grounds largely mirror pre-grant but extend prior art globally. Post-grant opposition shares grounds with revocation proceedings but differs procedurally. A post-grant opposition is held before the Controller and an opposition Board constituted by the Controller as per the Act. This is different from a revocation proceeding, where a suit is filed before the High Court under Section 64. The Supreme Court, in the matter Dr. Aloys Wobben v. Yogesh Mehra & Ors. (2014), further clarified that parallel post-grant opposition and Section 64 revocation proceedings are impermissible, and the opponent must choose one forum, thus preventing forum-shopping in challenges.
REQUIREMENTS
Requirements stem from Section 25 and Rules 55-62 of the Patents Rules, 2003. Pre-grant requires filing Form 7(A) with a grounds statement and supporting evidence (such as affidavits, data, and prior art). No filing fee is required at the time of filing a pre-grant opposition; however, if a hearing is desired, fees apply. The controller assesses prima facie merit, notifies the applicant of a response within two months from the date of the notice. A hearing opportunity to both parties is provided if requested, and before deciding on the matter.
Post-grant filing is made on Form 7 with an official fee of INR 8,000 (individuals/startups) or INR 40,000 (others), with evidence proving interest upfront. Controller forms Opposition Board (Rule 56, three-month review) to review the opposition and notify the Patentee. The Patentee must file a reply within two months from the receipt of a copy of the opposition from the opponent. The opponent is also allowed to file a further rejoinder based on the Patentee’s submissions. A hearing opportunity is provided to both parties that leads to the revocation/amendment/maintenance of the grant decision.
CONCLUSION
The Act robustly safeguards patent integrity via accessible pre-grant checks and targeted post-grant reviews, curbing evergreening while upholding innovation. Potential opponents should meticulously document grounds, gather prior art early, and meet deadlines to leverage these tools effectively. Applicants must prepare robust responses and monitor publications; consulting IP experts ensures compliance amid procedural nuances like 2024 fee hikes. This dual system fosters a balanced ecosystem, advising stakeholders to engage proactively for optimal outcomes.
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