November 6, 2011

Pre-Grant opposition: An opposition of a different kind

I was reading section 25(1) of the Patent Act 1970; and i found some confusion in relation to pre-grant opposition. 

Section 25(1) read as :At any time within four months from the date of advertisement of the acceptance of a complete specification under this Act (or within such further period not exceeding one month in the aggregate as the Controller may allow on application made to him in the prescribed manner before the expiry of the four months aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent  on the grounds:
1.If the invention (in full or part) is wrongly obtained.
2.Claim has been published before priority date claimed.
3.Claim has been claimed in other patent.
4.Claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.
5.Any claim of the complete specification is obvious and clearly does not involve any inventive step.
6.Any claim of the complete specification is not an invention
7.Complete specification does not sufficiently and clearly describe the invention
8.Failed to disclose information required by the controller.

As the Patent act or Patent rules doesn't describe regarding fees and forms of filing pre-grant opposition, it has given rise to few doubts in my mind.
1.As this pre-grant opposition is filed at the application stage, whether the party who is opposing to the application, should be considered as a necessary party as compared to post grant and revocation proceedings? 

As this has been not clearly stated in Act and rules about the pre-grant proceedings, i would like to go with the answer. NO. (the party who is opposing the application is not the necessary party). i,e it is not inter-party in nature of opposition.
1. As this in pre grant stage, revelation of document might cause damage or might hamper the credibility of the patent.If the party is considered as a party to proceedings, then he is entitled to see all the documents in relation to the pertaining application of patent. and if such documents are produced (it might constitute an prior art). 
2. There is no fees and forms prescribed for pre-grant opposition. 
3.Appearing and hearing is not compulsory, though he can provide an application for it, but it is upon the discretion of controller to allow such application.  If it deals with the matter of utmost importance, which if falls
in public domain, might loosen the stand of patent, controller can deny such application.
4. As stated inn section 15 of the Act states that power of controller to revoke and amend an application may be exercised even without a pre grant opposition.
5. The role of opponent is merely to  provide the grounds of opposition and material to support the grounds.
6.If the controller is satisfied with the materials opposing the application,then he can allow pre-grant opposition, on contrary if filed for post-grant or revocation,it is not upon the satisfaction of controller to accept or reject the same.He is bound to take up the application and start the proceedings.
7.In pre-grant opposition, cost is not allowed to the person who oppose the application, on contrary cost is allowed in post grant & revocation proceedings.i,e opponent can proceed with the case irrespective of the merit of notice of opposition. but the case is not same with pre-grant opposition.
8.Patent Act and Rules are silent about whether the defence of the applicant should be disclosed to the opponent.(If not disclosed to the party, as it would amount to violation of natural justice and may invoke writ jurisdiction), (if supplied, would form a prior art and as well as affect application).

Considering the above points, i am with the opinion that pre-grant opposition is not an inter-parte opposition, where the party who is opposing the application is not a necessary party, but he mere acts as an facilitator to oppose the application.This opposition is between Controller and the applicant of the patent.

Readers re free to provide their comments and opinions!!

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