Opposition proceedings to grant of patents — Intellectual Property Rights I Notes

Opposition proceedings to grant of patents

The patent system lets outsiders challenge a patent before it is sealed — and again shortly after. This two-window system stops bad patents at the gate rather than fighting them for years in court.

The two oppositions — s.25

A. Pre-grant opposition — s.25(1)

Any person (not only an interested person) may, after publication of the application but before grant, oppose in writing by way of representation to the Controller. It is cheap and open to the public. Grounds (s.25(1)(a)–(k)) include:

wrongful obtaining of the invention;
prior publication or prior claiming (the invention was already published or claimed earlier);
prior public knowledge or use in India;
obviousness / lack of inventive step;
the subject is not an invention (s.3/s.4) or not patentable;
insufficient disclosure; and
non-disclosure or wrong information under s.8.

B. Post-grant opposition — s.25(2)

Only a person interested may oppose, by notice, within 12 months of the date of publication of the grant. It is heard by an Opposition Board and the Controller, on grounds largely mirroring s.25(1).

The difference in a line: pre-grant is anyone, before grant, by representation; post-grant is a person interested, within 12 months of grant, by notice before a Board.

Patents Act, 1970, s.25(1): “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 patent…”; s.25(2): “at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller…”

In Simple Terms: There are two chances to block a patent. Before it is granted, anybody can object (s.25(1)). After grant, only someone with a real interest can object, and only within one year (s.25(2)). Common grounds are “it isn’t new”, “it was already claimed”, or “it’s obvious”.

🧩 WORKED EXAMPLE — the un-filed earlier inventor

Facts. X files a patent application on 01/03/2022. Y opposes, claiming he made the same invention on 25/02/2022 but never filed anything.

Rule. s.25(1) — grounds include prior publication or prior public use/knowledge; mere private prior invention that was never published or used is not by itself a ground, but prior public knowledge is.

Apply. If Y’s earlier invention was never published, used publicly, or claimed, X’s application is not defeated merely because Y “thought of it first” privately — patents follow first-to-file. But if Y had publicly disclosed or used it before 01/03/2022, that anticipation defeats X’s novelty.

Conclusion. Y’s opposition succeeds only if his prior invention was public before X’s priority date; a purely private earlier idea does not defeat X.

flowchart TD
    OPP["Opposition (s.25)"]:::root
    OPP --> PRE["Pre-grant s.25(1): ANY person, before grant"]:::leaf
    OPP --> POST["Post-grant s.25(2): person interested, within 12 months"]:::leaf
    PRE --> GR["Grounds: prior publication, prior claiming, obviousness, not patentable"]:::leaf
    POST --> BD["Heard by Opposition Board + Controller"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Novartis AG v Union of India (2013) — began with a pre-grant opposition to the Glivec application, showing the mechanism’s importance.
Cipla v F. Hoffmann-La Roche (2012) — validity grounds overlapping with opposition grounds were litigated post-grant.

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