PATENT PROSECUTION IN INDIA: FROM FILING TO GRANT AND POST-GRANT OPPOSITION

PATENT PROSECUTION IN INDIA: FROM FILING TO GRANT AND POST-GRANT OPPOSITION

India is a vast market that attracts large investment in research and development from both domestic and international entities. It is further an important place in terms of the production and development of goods and services and therefore protecting innovation through patents become crucial. The patenting process in India follows a structured, step-by-step approach to ensure that only genuine inventions receive legal protection. It formally commences with filing a patent application, followed by a formal examination, regulatory review, potential opposition, and ultimately, grant approval. During this phase, third parties can challenge the application through pre-grant opposition, maintaining the integrity of the patent system. If no opposition succeeds, the patent is granted, securing exclusive rights for the inventor.

There are two kind of systems being followed worldwide for the determination of patent rights: first-to-file (FTF) and first-to-invent (FTI). In the FTF framework, priority is given to the individual who submits the patent application earliest, irrespective of when the invention was actually conceived or developed. Conversely, the FTI approach grants patent rights to the individual who can prove they were the original inventor, even if another applicant filed first. 

In India, the patent regime adheres to the first-to-file principle, meaning that the entitlement to a patent is based on the date of filing, not the date of invention. Consequently, if someone else files a patent application before you—even if you invented it first—you may risk your rights to patent that invention.

Even after a patent is granted, mechanisms like post-grant opposition and revocation help uphold legal and technical standards. Understanding each stage—from filing and examination to grant and potential challenges—is essential for innovators and businesses aiming to safeguard their intellectual property. This article provides a concise yet comprehensive overview of these steps, highlighting key procedures, strategic considerations, and recent legal developments shaping the Indian patent landscape.

PRE-FILING CONSIDERATIONS

A patent is a valuable asset for any company, representing a significant investment of time and money. Discovering later that a granted patent infringes on existing rights can have serious repercussions on business operations and strategic planning. Therefore, before initiating the patent application process, it is essential to ensure that the invention complies with the patentability criteria established by the Indian Patents Act, 1970. These criteria include: ​

• Novelty: The invention must be new and not anticipated by prior art.​
• Inventive Step (Non-Obviousness): The invention should not be obvious to someone skilled in the relevant field. ​
• Industrial Applicability: The invention must be capable of being used in an industry.

Conducting a detailed prior art search is essential to assess an invention novelty and inventive step. This process helps identify existing technologies, providing valuable insights into patentability and strengthening the chances of securing a patent. ​

TYPES OF PATENT APPLICATIONS

1. ORDINARY APPLICATION 

An application for patent filed in the Patent Office without claiming any priority either in a convention country or without any reference to any other earlier application under process in the office. Such type of application is known an ordinary application.  

Ordinary application can be filed in two ways:  

1. Provisional Application: Indian Patent Law follows first to file system. A provisional specification can be filed if the invention is still under experimentation stage. Filing a provisional specification provides the advantage to the inventor since it helps in establishing a priority date of the invention. 
2. Complete Application: An applicant may directly file the complete specification if the invention is fully developed and this includes detailed specifications and claims related to the invention. This needs to be filed within 12 months from the filing of the Provisional Application.

Is it necessary to file a provisional specification? 

Generally, when an invention is not complete, an application can be filed with provisional specification. This is useful in establishing a priority date for your invention. Moreover, it also gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.

2. Convention Application

Establishes a priority date based on the same or substantially similar application filed in one or more of the convention countries.

3. PCT International Application

Under the Patent Cooperation Treaty (PCT), any resident or national of a PCT contracting state, including India, may file an international patent application. Indian residents or nationals can file such applications either with the Indian Patent Office at Delhi, Chennai, Mumbai, or Kolkata, acting as the Receiving Office (RO/IN), or directly with the International Bureau of the World Intellectual Property Organization (WIPO) (RO/IB). Once the international application is filed, it proceeds through several stages, including international search conducted by a designated International Searching Authority (ISA), which in India is the Indian Patent Office at Delhi, recognized as an ISA and International Preliminary Examining Authority (IPEA) since October 15, 2013. The ISA issues an International Search Report (ISR) and a Written Opinion of Search Authority (WOSA), assessing the novelty and potential patentability of the invention. These are published by WIPO after 18 months from the earliest priority date. Subsequently, the applicant may request an International Preliminary Examination, resulting in the issuance of the International Preliminary Report on Patentability (IPRP). It is crucial for the applicant to enter the national phase in the designated PCT member countries within 30 or 31 months from the priority date; otherwise, the application is considered withdrawn in those jurisdictions, although some countries may permit late entry under specific conditions.

4. PCT National Phase Application

The national phase in India marks the transition from the international phase of a PCT application to the Indian patent procedure. To retain rights in India, the applicant must enter the national phase within 31 months from the earliest priority date. This deadline may be extended by up to 6 months upon payment of prescribed fees.

Filing Requirements

• To file a PCT national phase application in India, the following must be submitted:
• Full specification (description, claims, abstract, drawings) in English or Hindi.
• Applicant and inventor details (name, nationality, address).
• Title of the invention and priority claim details.
• Prescribed filing fees.

Translation of documents in other languages must be filed in English within 31 months or within a further extended period. A Power of Attorney must be filed within 3 months (original if requested). If the applicant is not the inventor, an Assignment Deed or Form 1 signed by the inventor must be submitted within 6 months.

5. Patent of Addition

It is applicable when there is a slight modification or improvement to an invention for which the applicant has already applied for or has been granted a patent. It is suitable when the new invention does not involve a substantial inventive step over the main invention. Moreover, no separate renewal fee is required during the term of the main patent, and the patent of addition expires simultaneously with the main patent.

6. Divisional Application:
   A divisional application is filed when a single patent application contains claims relating to more than one invention. To address this, either voluntarily or in response to an objection by the patent office, the applicant may separate the original application into two or more distinct applications. Each resulting application focuses on a specific invention disclosed in the original filing. These new applications, known as divisional applications, retain the same priority date as the original (parent) application, ensuring continuity in the patenting process.

PRIORITY DATE:

The Priority Date refers to the date that establishes the precedence of an invention and serves as the key reference point for evaluating its novelty. Any public disclosure or prior art before this date may affect the patentability of the invention. Under Section 11 of the Indian Patent Act, the priority date is defined differently depending on the type of filing:

1. Provisional Application: If a provisional application is followed by a complete specification, the priority date is the filing date of the provisional application.
2. Multiple Applications: When there are multiple prior applications, the earliest filing date of the relevant disclosure is considered the priority date.
3. International Applications (Paris Convention & PCT): For applications filed internationally, the priority date is the filing date of the foreign application, provided the Indian application is filed within 12 months.
4. National Phase Entries: For PCT applications entering India, the priority date remains the same as the earliest filing date in the convention country.

To claim priority under Section 11, the invention must:

• Be the same as described in the earlier application.
• Contain a complete disclosure in the prior application.
• Be filed in India within 12 months of the priority date.

Claiming a priority date plays a crucial role in securing robust patent protection. It establishes the official date from which the novelty of an invention is assessed, effectively shielding the application from any disclosures made after that date. This allows inventors to further refine or develop their invention while retaining the benefit of the earliest filing. Utilizing a priority date can significantly enhance the strength and scope of patent rights, both in India and globally.

IN INDIA, THE PATENT PROSECUTION PROCESS IS CATEGORIZED INTO TWO PRIMARY PHASES:

1. Pre-Grant Prosecution

This stage involves multiple critical steps, including:

1. Filing and publication of the application
2. Submitting a request for examination
3. Conducting a patent search and examination
4. Issuance of the examination report
5. Responding to the examination report
6. Consideration of subsequent examination reports or hearings
7. Addressing any pre-grant opposition
8. Final decision by the Controller

2. Post-Grant Prosecution

Once a patent is granted, it may still undergo further scrutiny through a post-grant opposition that can be initiated by any person within one year from the date the patent is granted and published. The objections raised typically align with those permitted during pre-grant opposition. The process may involve several exchanges of written submissions and supporting evidence from both the opponent and the patentee. After reviewing the case and considering the recommendations of the Opposition Board, the Controller may decide to maintain the patent as is, require amendments, or revoke it entirely. 

DRAFTING THE PATENT APPLICATION

A well-drafted patent application is crucial for effective protection. The application should include: ​

• Title: A clear and concise title reflecting the invention. ​
• Field of Invention: The technical domain to which the invention pertains. ​
• Background: A description of prior art and the problem addressed by the invention. ​
• Summary: A brief overview of the invention’s core aspects. ​
• Detailed Description: An in-depth explanation of the invention, often accompanied by drawings or diagrams. ​
• Claims: Define the scope of protection sought. ​

Accuracy and clarity in drafting a patent application—especially in the claims—are essential, as they determine the boundaries of legal protection and the strength of the inventor’s rights.

PRE-GRANT PROSECUTION IN THE INDIAN PATENT 

The pre-grant prosecution process at the Indian Patent Office is a vital phase where a patent application undergoes thorough examination to assess its patentability. A patent is granted only if the application meets all necessary criteria and passes each stage of scrutiny. This process is instrumental in determining the validity and enforceability of the patent. In India, pre-grant prosecution covers various steps, starting from the filing of the application to its final grant. A detailed discussion of this stage is provided here.

1. FILING THE PATENT APPLICATION

Initiating the patent grant process in India begins with filing a patent application. Applicants can submit their applications to any of the four designated Patent Offices based on their place of residence or business operations.

Required Documents

To file a patent, the following documents must be submitted:

• Patent Application Form: Official request for patent registration.
• Complete or Provisional Specification: Detailed description of the invention.
• Statement and Undertaking (Section 8): Declaration regarding foreign applications.
• Declaration of Inventorship: Identifies the inventor(s) responsible for the invention.
• Power of Attorney: Required if filing through a patent agent.

Patent specification is a critical step in securing intellectual property rights. The specification can be of two types: Provisional Specification and Complete Specification. Each serves a distinct purpose in the patent filing process and requires careful drafting to ensure adequate protection for the invention.

Drafting a Provisional Specification

A Provisional Specification is filed to secure a priority date and provides a broad outline of the invention. It should be drafted with clarity to define the invention adequately while allowing room for further refinements in the Complete Specification. A well-drafted Provisional Specification consists of the following elements:

• Title of the Invention: The title should be precise and indicative of the subject matter.
• Field of Invention: This section describes the technical domain to which the invention pertains.
• Background of the Invention: It provides context by highlighting existing problems and the necessity of the invention.
• Brief Description of the Invention: A concise explanation of the core inventive concept without exhaustive technical details.
• Statement of the Advantage: It outlines the key advantages or improvements over prior art.
• Claims (Optional): Although not mandatory in a Provisional Specification, including broad claims can enhance clarity.

A Provisional Specification does not require exhaustive details but should be sufficiently descriptive to establish the invention’s novelty. Once filed, it grants the applicant a 12-month period to file a Complete Specification.

Drafting a Complete Specification

A Complete Specification is a detailed document that fully discloses the invention and defines the scope of the patent protection. It must be carefully prepared to clearly disclose how the invention works, highlight its unique features, and ensure that the rights claimed can be effectively enforced. The essential components of a Complete Specification include: 

• Title of the Invention: The title should remain consistent with the provisional application.
• Field of Invention: This section specifies the technical area of the invention.
• Background and Prior Art: It discusses existing technologies and the limitations that the invention seeks to overcome.
• Objects of the Invention: This section clearly states the objectives, advantages, and unique aspects of the invention.
• Detailed Description: A comprehensive explanation of the invention, including embodiments, preferred implementations, and variations. This section should include technical specifications and operational details.
• Claims: The most crucial part of the specification, as it legally defines the scope of protection. Claims must be precise and well-structured to ensure enforceability.
• Abstract: A concise summary of the invention, typically limited to 150 words.
• Drawings (if required): Illustrations and diagrams that complement the description, helping in understanding the invention better.

A well-crafted Complete Specification is essential for the substantive examination process and forms the cornerstone of a patent’s long-term validity. It ensures that the invention is described with clarity, supported with sufficient detail, and fully protected, setting the stage for the successful enforcement and commercialization of the patent.

FILING PROCEDURE

A patent Application contain a comprehensive specification detailing the invention’s technical aspects, along with the prescribed forms and official fees. Patent applications can be filed either electronically or in physical form, depending on the applicant’s preference.

In India, patent administration is handled by the Indian Patent Office, functioning under the authority of the Controller General of Patents, Designs & Trade Marks (CGPDTM). The Patent Office operates from four regional branches located in Kolkata (head office), Mumbai, Delhi, and Chennai.

Modes of Filing a Patent Application in India

1. Electronic Filing (e-Filing)

The Indian Patent Office offers a dedicated online portal for e-filing, allowing applicants, agents, and legal representatives to file patent applications and associated forms digitally. This system ensures a secure, convenient, and paperless method of submission.

2. Physical Filing (Offline Submission)

Applicants may also file patent documents manually by submitting physical copies to the appropriate regional Patent Office. However, opting for offline filing attracts an additional roughly 10% fee over the standard charges applicable to online submissions.

Advantages of Online Patent Filing

Online patent filing has become the method of choice for most applicants due to its efficiency and accessibility. It allows users to submit documents in digital format, track application status in real time, and avoid delays caused by manual paperwork. The e-filing system also consolidates all filings and communication in one central platform, making it easier for applicants to manage their submissions.

STEPS FOR ONLINE PATENT FILING IN INDIA

1. Visit the Official Website – Navigate to the e-filing portal of the Indian Patent Office.
2. Register/Login – If you are a first-time user, register by following the Digital Signature Certificate (DSC) guidelines.
3. Select and Fill Forms – Choose the appropriate form for new or existing applications and fill in the required details.
4. Upload Documents – Attach necessary documents in PDF format.
5. Save Draft – Review and save your application draft.
6. Enter Contact Details – Provide a mobile number for SMS alerts.
7. Sign the Application – Digitally sign the completed forms.
8. Make Payment – Complete the payment process using net banking, credit/debit cards, or UPI.
9. Receive Acknowledgment – Upon successful submission, an acknowledgment receipt will be generated.

Key Forms Required for Patent Filing in India

• Form 1 – Application for grant of a patent
• Form 2 – Provisional or complete specification
• Form 3 – Statement and undertaking on foreign applications
• Form 5 – Declaration of inventorship
• Form 26 – Authorization of a patent agent (if applicable)
• Form 28 – Declaration for claiming startup or small entity status

2. PUBLICATION OF THE APPLICATION

In India, patent applications are ordinarily published 18 months from the date of filing or the priority date, whichever is earlier. However, applicants can expedite this process by requesting early publication through Form-9 and the Indian Patent Office upon such request typically publishes the application within one month provided the invention doesn’t relate to atomic energy or national defense.

Once published, the full details of the application including the complete specification are made accessible to the public for scrutiny via the IPO’s online portal.

Although legal enforcement of patent rights begins only after grant, publication grants the applicant provisional rights from the date of publication. This allows the patentee to claim damages for any infringement occurring after the application becomes publicly available.

Applicant also has the option of filing Form-9 at the time of filing the patent application for early publication wherein the application is published within a month, as stipulated under Section 11A(2) and Rule 24 of the Indian Patent Rules. Early publication is a valuable tool to accelerate the examination process, as the request for examination can only be filed after publication. This effectively shortens the overall prosecution timeline, eliminating the need to wait for the standard 18-month publication period.

3. REQUEST FOR EXAMINATION (RFE)

​In India, the patent examination process begins only after a formal Request for Examination (RFE) is filed by the applicant or an interested party. This request, submitted using Form 18 along with the prescribed fee, is a crucial procedural step. 

Revised Timeline for Filing RFE

Under the Patents (Amendment) Rules, 2024, the deadline to file the RFE has been shortened from 48 months to 31 months from the earliest priority date or filing date, whichever is earlier, for all applications filed on or after March 15, 2024. The previous 48-month period remains in effect for applications filed before this date. If the RFE is not filed within the applicable timeline, the application is treated as withdrawn, effectively ending its prosecution. 

Consequences of Missing the RFE Deadline

Failing to file the RFE within the stipulated timeframe results in the application being deemed withdrawn by the applicant. This underscores the importance of adhering to the revised deadlines to ensure the progression of the patent application process.​

Strategic Implications

The alignment of the RFE deadline with the 31-month national phase entry deadline streamlines the patent prosecution process in India. Applicants are encouraged to prepare their RFE submissions concurrently with their national phase entries to maintain compliance and expedite examination. 

4. EXAMINATION PROCESS

Once the Request for Examination (RFE) is filed, the Indian Patent Office designates a patent examiner to assess the application. The examiner conducts a detailed review of the invention to determine whether it meets the essential patentability requirements—namely, novelty, inventive step, and industrial applicability. This involves an in-depth search for existing knowledge or prior art that could potentially impact the grant of the patent.

5. ISSUANCE OF THE FIRST EXAMINATION REPORT (FER)

The First Examination Report (FER) is a crucial step in the patent application process at the Indian Patent Office (IPO). It serves as an official communication from the examiner, outlining any objections or requirements that must be addressed before a patent is granted. These objections may relate to both formal aspects of the application and substantive issues concerning patentability.

Examination Process and FER Issuance

While examining a patent application, the patent office undertakes a detailed assessment of existing knowledge by performing an extensive prior art search. This involves reviewing both domestic and international patent databases, as well as non-patent literature, to identify any previously disclosed material relevant to the invention. The search is conducted with reference to the filing date of the complete specification to evaluate the novelty and inventive step of the claimed invention.

The assessment of the patent application is based on several key criteria:

• Patentable Subject Matter: Whether the invention falls within the scope of patentable innovations.
• Novelty: Whether the invention is new and not disclosed in prior art.
• Inventive Step: Whether the invention involves a significant technological advancement beyond existing knowledge.
• Industrial Applicability: Whether the invention can be applied in a practical industrial setting.

Structure of the First Examination Report (FER)

The First Examination Report (FER) issued by the Indian Patent Office is organized into four primary components:

a. Summary of the Report

This section provides an overview of the patent application’s compliance with key provisions of the Patent Act. It includes an assessment of:

• Novelty and inventive step
• Industrial applicability
• Eligibility for patent protection under Sections 3 and 4 of the Patents Act
• Unity of invention as per Section 10(5)
• Sufficiency of disclosure under Section 10(4)
• References to related domestic or international filings
• Clarity and precision of claims in line with Sections 10(4)(c) and 10(5)

b. Detailed Technical Report

This section contains a detailed description of the summary report. It is further categorized into: 

• List of Cited Documents: A compilation of relevant patent and non-patent literature (prior art) that relates to the invention, along with priority and publication dates.
• Detailed Observations: An detailed analysis explaining the objections, referencing prior art and indicating non-compliance with legal provisions regarding inventive step, non-patentability, sufficiency of disclosure, and claim clarity and further include recommendations for rectification.

c. Formal Requirements

This part identifies any pending procedural requirements such as missing forms, formatting issues, or other formal discrepancies that need to be addressed.

d. Documents on Record

A complete index of all documents considered or cited in the FER is included here, along with reference numbers and dates. It also mentions the timeline within which the applicant must respond to the FER.

6. RESPONSE TO THE FER

The First Examination Report (FER) is a pivotal step in the Indian patent prosecution process. It outlines the examiner’s observations and raises objections concerning the patent application, particularly in relation to novelty, inventive step, and clarity. A strategic and well-articulated response to the FER is key to moving the application forward towards grant.

To effectively respond, it is important to first analyze the examiner’s comments and the prior art references (typically labeled D1, D2, etc.) cited against the claimed invention. A thorough review of these documents—ideally accessed through official patent databases or with assistance from a patent professional—can help in assessing the points of comparison. This process enables the applicant to draw attention to distinguishing features, technical advantages, or inventive improvements offered by the invention over the cited prior art.

A compelling response should present clear and reasoned arguments addressing each objection. This may include technical clarifications, legal justifications, and where appropriate, amendments to the claims. Any amendments must remain within the scope of the original disclosure while strategically refining the claims to overcome objections. Submitting supporting materials such as experimental data, user feedback, or expert declarations can further strengthen the applicant’s position.

If objections remain unresolved, the applicant has the option to request a hearing before the Controller to present oral arguments and provide further clarification. Importantly, the FER response must be submitted within six months from the date of issue, with a possible extension of three months under the Patents (Amendment) Rules, 2024.

The process involves collaboration between the inventor, who provides technical insights; the patent attorney, who formulates the legal response and represents the applicant; and the patent office, which evaluates the submissions and issues the final decision. A well-prepared reply that systematically addresses each concern significantly enhances the chances of securing a patent grant.

7. SUBSEQUENT EXAMINATION REPORTS AND HEARINGS

After submitting a reply to the First Examination Report (FER), the Indian Patent Office may sometime issue a Second Examination Report (SER), typically when the Controller requires further clarification or finds that the amendments made raise new issues. While not commonly issued, an SER plays a critical role in ensuring procedural fairness especially when substantive changes have been made to the claims. The timeline to respond to an SER aligns with that of the FER, offering a total of up to nine months (including a discretionally extension of up to three months). The importance of issuing an SER in such cases was underscored by the Delhi High Court in Guangdong Oppo Mobile Telecommunications Corp., Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022), where the Court has clarified that any amendment to a complete specification must be followed by a re-examination, and an SER should be issued as per Section 13(3) of the Indian Patents Act. Non-compliance with this procedural requirement could lead to an unsustainable refusal order, underlining the importance of issuing an SER where amendments are made to patent specifications

Oral Hearings in Patent Prosecution:

When objections raised in the First Examination Report (FER) or Subsequent Examination Report (SER) remain unresolved, the Indian Patent Office (IPO) offers applicants an opportunity to present their case through an oral hearing. This stage plays a vital role in upholding procedural fairness and ensuring applicants are given a reasonable chance to be heard before a final decision is taken. While the IPO may schedule a hearing on its own, applicants are encouraged to proactively request one while replying to examination reports, particularly when complex or substantive issues are involved. This proactive step can help streamline the process and avoid prolonged delays.

Conduct of Oral Hearings:

A hearing notice is issued by the Controller, typically giving the applicant a window of 10 to 30 days to prepare. Should the applicant need more time, up to two adjournments may be granted, each allowing for an extension of approximately one month. Hearings may be attended in person or virtually, with the IPO providing video conferencing links where requested. Following the hearing, the applicant is expected to submit written arguments within 15 days, although an extension of up to one month may be allowed at the Controller’s discretion.

Importance of Attendance and Flexibility in Procedure:

Participation in the hearing is essential. Non-attendance without prior approval may lead to the application being treated as abandoned or refused. While the IPO generally requires oral hearings for substantial issues, in cases where only procedural or minor objections remain, applicants may request permission to submit written arguments instead. Such discretion rests with the Controller, and approval is granted on a case-by-case basis. Nonetheless, the oral hearing remains a key component of the patent examination process, offering applicants a final, valuable opportunity to address outstanding concerns directly before the patent office.

Important Points for Patent Applicants to Keep in Mind:

In India, once the objections raised in the First Examination Report (FER) or Supplementary Examination Report (SER) are successfully resolved—either through written submissions or a hearing—the patent may be granted without any prior intimation. Unlike some other countries, the Indian Patent Office (IPO) does not issue advance notice of grant. Therefore, it is crucial for applicants to ensure that all necessary formalities, such as filing of divisional applications or making voluntary amendments, are completed proactively during the prosecution stage. Although Controllers may sometimes issue informal reminders regarding pending actions, this is entirely at their discretion and cannot be relied upon.

8. PRE-GRANT OPPOSITION

     The Indian patent system is structured to ensure that only genuine and deserving inventions receive patent protection. One of the crucial mechanisms to uphold this objective is the provision for pre-grant opposition under the Patents Act, 1970. Pre-grant opposition provides an opportunity for any person to challenge the grant of a patent before it is officially granted, ensuring that patents are awarded only to inventions that meet the legal requirements.

Legal Framework for Pre-Grant Opposition

Under the provisions of Section 25(1) of the Patents Act, 1970, a mechanism known as pre-grant opposition is established. This enables any individual to raise objections in writing to a patent application once it has been published but prior to the grant of the patent. The central aim of this provision is to act as a safeguard, ensuring that patents are not granted to inventions that do not satisfy essential criteria such as novelty, inventive step, industrial applicability, or other legal requirements set forth by the Act.

Grounds for Pre-Grant Opposition

A pre-grant opposition can be filed on the following grounds:

1. Wrongful Obtainment (Section 25(1)(a) of the Patent Act): If an invention is wrongfully obtained from another person, the rightful owner can file an opposition to the patent application.
2. Lack of Novelty – Prior Publication (Section 25(1)(b) of the Patent Act): If the invention has been published before the priority date in any document, it is not considered novel.
3. Lack of Novelty – Prior Claiming (Section 25(1)(c) of the Patent Act): If the invention has been previously claimed in India in another patent application with an earlier priority date, it cannot be patented again.
4. Public Knowledge or Public Use in India (Section 25(1)(d) of the Patent Act): If the invention was publicly known or used in India before the priority date, it is not patentable.
5. Obviousness and Lack of Inventive Step (Section 25(1)(e) of the Patent Act): If the invention is an obvious extension of existing knowledge, it lacks an inventive step and is ineligible for a patent.
6. Non-Patentable Subject Matter (Section 25(1)(f) of the Patent Act): Certain inventions, as defined under Sections 3 and 4 of the Patents Act, are not patentable.
7. Insufficient Disclosure (Section 25(1)(g) of the Patent Act): If the complete specification does not adequately describe the invention, enabling a skilled person to work it, the patent can be opposed.
8. Failure to Disclose Foreign Applications (Section 25(1)(h) of the Patent Act): The applicant must disclose details of corresponding foreign applications. Non-disclosure or false disclosure can be a ground for opposition.
9. Convention Priority Not Maintained (Section 25(1)(i) of the Patent Act): If a patent application claiming priority under the Paris Convention is not filed within the prescribed 12 months, it can be opposed.
10. Incorrect or Non-Disclosure of Biological Material Source (Section 25(1)(j) of the Patent Act): If the application fails to disclose the geographical source of biological material used, it can be opposed.
11. Traditional Knowledge Anticipation (Section 25(1)(k) of the Patent Act): If the invention is already known in traditional knowledge in India or elsewhere, it cannot be patented.

Procedure for Pre-Grant Opposition

The Indian patent system provides a vital check-and-balance mechanism through the pre-grant opposition process, allowing any person to challenge a patent application after publication but before grant. This process, governed by Rule 55 of the Patents Rules, 2003, is designed to enhance the quality of granted patents and prevent unwarranted monopolies over trivial or non-inventive subject matter.

1. Filing of Representation: A pre-grant opposition can be filed by any person—be it a competitor, researcher, organization, or member of the public—with no requirement to prove personal interest. The representation of opposition must be submitted using Form 7A, accompanied by a detailed statement and any relevant evidence supporting the objections. If the patent applicant hasn’t yet requested examination, the opponent is also required to file Form 18 to initiate examination proceedings.
2. Notification to the Applicant: If, upon considering the representation, the Controller is of the opinion that the patent application should be refused or that the complete specification requires amendment, a notice to that effect shall be issued to the applicant. In response, the applicant may, if he so chooses, submit his statement along with any supporting evidence within three months from the date of the notice, ensuring a copy is also provided to the opponent.
3. Examination of the Representation: The Controller reviews the opposition along with the application and the evidence submitted by both parties, and after providing an opportunity for a hearing, may take one of the following actions:

• Reject the representation if no prima facie case is established.
• Accept the representation if a prima facie case is made, providing reasons for the same.

4. Decision by the Controller: After considering the submissions and evidence presented by both parties, the Controller may:

• Dismiss the opposition and permit the patent application to proceed;
• Direct amendments to the complete specification as deemed necessary; or
• Reject the patent application in its entirety if the opposition is found to be valid.

Who Can File a Pre-Grant Opposition?

Any person, including competitors, individuals, organizations, or public interest groups, can file a pre-grant opposition to a published patent application. This ensures that the patent system remains transparent and accountable.

Forms and Fees for Filing Pre-Grant Opposition

• The opposition must be submitted in Form 7A with supporting evidence.
• If the applicant has not filed a request for examination, the opponent must file Form 18 for examination before submitting the opposition.

Significance of Pre-Grant Opposition

Pre-grant opposition is more than a procedural safeguard—it is a powerful tool that upholds the integrity of the patent system. By filtering out applications that lack novelty, inventive step, or proper disclosure, it protects public knowledge from unjustified privatization and reduces the likelihood of future litigation. This transparency fosters an environment where genuine innovation can thrive, and only those inventions that meet the legal standards of patentability receive protection.

Conclusion

The pre-grant opposition process is a cornerstone of India’s balanced patent regime. It empowers the public to actively participate in patent examination and ensures that the rights conferred by patents are both deserved and justified. In doing so, it promotes a healthy, innovation-driven ecosystem while safeguarding public interest and ensuring access to knowledge and technology.

9. DECISION OF THE CONTROLLER AND GRANT OF PATENT

Upon reviewing the examination reports, the applicant’s responses, and any opposition filed, the Controller will issue a final decision. If all objections are addressed effectively and no valid opposition remains, the patent will be granted. However, failure to overcome the objections or a successful opposition can lead to the refusal of the patent application.

Trends in Patent Examination in India

In India, patent examination trends reveal a diverse pattern in the outcomes of applications. Approximately half of the applications examined are granted immediately after responding to examination reports. The other half, however, progress to an oral hearing. The likelihood of requiring an oral hearing often depends on the technical nature of the invention. For instance, mechanical inventions generally face fewer hearings, while software-related inventions are more likely to raise patent eligibility concerns, leading to hearings.

Recent data shows that less than 1% of patent applications receive a Substantive Examination Report (SER), with the remaining either moving directly toward grant or proceeding to an oral hearing. Despite this, the Indian Patent Office (IPO) maintains an average grant rate of approximately roughly around 80%, meaning most applicants ultimately secure their patents, though some applications may be refused.

The patent examination process in India is a complex and crucial journey, requiring applicants to pay close attention to detail, respond promptly to examination reports, and be prepared for the possibility of oral hearings. The GUANGDONG OPPO case highlights the importance of strict procedural adherence, especially when dealing with the issuance of SERs. By understanding and proactively navigating these procedures, applicants can greatly improve their chances of obtaining patent protection in India. Timely responses, thorough preparations for hearings, and attention to formalities are essential strategies for successfully navigating the intricacies of the Indian patent system.

10. POST-GRANT OPPOSITION

In the Indian patent system, post-grant opposition serves as an important safeguard, enabling third parties to challenge the validity of a patent once it has been granted. This mechanism ensures that only patents meeting the necessary standards of novelty and inventiveness are upheld. A post-grant opposition can be filed by any interested party within 12 months from the date the patent grant is published in the Indian Patent Journal. Governed by Section 25(2) of the Patents Act, 1970, and detailed in Rules 55-62 of the Patents Rules, 2003, this process plays a crucial role in maintaining the integrity and quality of granted patents.

Eligibility and Filing Procedure

In contrast to a pre-grant opposition, which is open to any individual, a post-grant opposition can only be filed by an interested party. To begin the opposition process, the concerned party must submit a notice of opposition in Form 7, accompanied by the required fee, to the relevant patent office. Upon receiving the notice, the Controller of Patents will initiate the formal proceedings, which are carried out as follows:

1. Constitution of the Opposition Board: The Controller constitutes a panel of three qualified members to assess the opposition, designating one of them to preside over the proceedings. Notably, any examiner who played a role in granting the original patent is excluded from this panel to ensure impartiality.
2. Patentee’s Reply: Upon receiving notice of the opposition, the patent holder is granted a two-month window to file a formal response. If no reply is submitted within this period, the patent is deemed to be stand revoked.
3. Opponent’s Evidence: The opponent may file evidence in response to the patentee’s reply within one month.
4. Examination by the Board: The panel carefully reviews all documents and arguments submitted by both parties. Within three months, it prepares a detailed report containing its assessment and recommendations.
5. Conduct of the Hearing: A hearing is then scheduled, with both sides receiving a minimum of ten days’ notice. During this session, the Controller reviews the submissions and evidence, allowing each party to present their case.
6. Final Decision: Taking into account the Board’s report and the arguments made during the hearing, the Controller delivers a final ruling—either maintain the status of the patent, emending its terms, or revoking it altogether. The decision is then formally communicated to both parties.

Grounds for Post-Grant Opposition

Under Indian patent law, once a patent is granted and published, it is not immune to challenge. Section 25(2) of the Patents Act, 1970 empowers any person interested to file a post-grant opposition within one year from the date of publication of the grant. This mechanism ensures that wrongly granted patents can be scrutinized and invalidated, if necessary, based on a set of clearly defined legal grounds.

The grounds for post-grant opposition are comprehensive and are aimed at maintaining the integrity of the patent system. The following are the key grounds, along with the corresponding sub-clauses of Section 25(2):

The grounds for post-grant opposition in India are the same as those for pre-grant opposition and include:

• Wrongful Acquisition:
  If the invention was obtained wrongfully from the opponent or someone through whom the opponent claims, it forms a valid ground for opposition.
  [Section 25(2)(a)]
• Prior Publication and lack of novelty:
  A patent may be challenged if the invention was already disclosed prior to the priority date in any Indian patent application or other public document, either in India or abroad.
  [Section 25(2)(b)]
• Earlier Priority Claim:
  Opposition can be raised if the same invention is already claimed in a previously filed Indian patent application with an earlier priority date.
  [Section 25(2)(c)]
• Public Knowledge or Use in India:
  If the invention was already known or used publicly in India before the priority date, it is not eligible for a patent. This includes imported products made by the claimed process.
  [Section 25(2)(d)]
• Lack of Inventive Step / Obviousness:
  If the invention lacks an inventive step and is obvious in light of prior art or prior use in India, the patent may be opposed.
  [Section 25(2)(e)]
• Non-Patentable Subject Matter:
  If the claimed subject matter does not qualify as an invention or falls under the exclusions provided under the Act (such as computer programs per se or traditional knowledge), it may be opposed.
  [Section 25(2)(f)]
• Insufficient Disclosure:
  A patent must clearly and sufficiently disclose the invention and the method of performing it. Failure to do so is a valid ground for challenge.
  [Section 25(2)(g)]
• Non-Compliance with Section 8:
  If the patentee has failed to disclose information about corresponding foreign patent applications or provided false details, the patent is liable to be opposed.
  [Section 25(2)(h)]
• Delay in Filing Convention Application:
  In the case of a convention application, if it was not filed within 12 months from the earliest application in a convention country, it can be opposed.
  [Section 25(2)(i)]
• Incorrect or Non-Disclosure of Biological Material Source:
  If the source or geographical origin of any biological material used in the invention is not disclosed or is misrepresented, the patent may be revoked.
  [Section 25(2)(j)]
• Traditional Knowledge:
  A claimed invention that is already known through traditional or indigenous knowledge, whether in India or elsewhere, is not patentable.
  [Section 25(2)(k)]

Comparison with Pre-Grant Opposition

While the grounds for pre-grant and post-grant opposition are identical, there are notable procedural differences:

Post-grant opposition is a crucial mechanism in upholding the standards of patent protection in India. It provides an avenue for third parties to contest the validity of a granted patent, helping to filter out those that may not fully comply with statutory or technical benchmarks. While the procedure may be more time-consuming and requires payment of a fee, it serves an important function in preventing the enforcement of potentially flawed patents. When used strategically alongside pre-grant opposition, this process contributes to a more robust and credible patent landscape—one that supports genuine innovation and discourages misuse of intellectual property rights.

CONCLUSION

Navigating the patent prosecution process in India requires meticulous attention to detail at each stage, from ensuring the invention’s patentability to effectively responding to examination reports and managing potential oppositions. Engaging with experienced patent professionals can facilitate a smoother journey through this complex process, ultimately securing robust protection for the invention.