Pre-Grant and Post-Grant Patent Opposition in India: What You Need to Know
Introduction :
A patent provides the inventor with the right to control an invention for a period of time, but a patent application, along with the exclusive right, has other considerations. In India, there are opportunities for third parties to line up challenges to patent applications or granted patents by means of patent opposition in India.
The Indian statute devises two broad categories relating to the timing for which oppositions may be filed: opposition prior to grant of patent or opposition subsequent to the patent. Despite both categories of oppositions being available to challenge the granted patent rights on specified grounds, the timing for which the oppositions may be filed and the procedures involved differ.
Knowledge of these categories is important for startups, researchers, MSMEs, product teams, and established businesses as they consider protecting their own patents or evaluate potentially competing patents owned by third parties.
Learning objectives include understanding the distinction between the two categories of oppositions, the applicable grounds, the key requirements, and the role of professional IP service providers.
What is Patent Opposition in India?
Patent opposition is a part of Section 25 of the Patents Act, 1970, through which a party is able to challenge the grant or continuation of patent rights on the specified grounds.
As broadly expressed, opposition may occur:
Before the patent is granted – pre-grant opposition
After the patent is granted – post-grant opposition
The goal is to ensure the patent examination system considers the relevant objections.
The Controller’s rejection of a patent grant request is not an automatic response to an opposition. The Controller will make an appropriate decision after reviewing pertinent pleadings, evidence, submissions, and hearing requests, where necessary.
What is Pre-Grant Opposition?
When Can Pre-Grant Opposition Be Filed?
As stated by Section 25(1), any person can file a written request to oppose publication of a patent opposing the grant of the patent on normal grounds described in the Act at any point while the patent application is published but prior to the final grant of the patent.
The representation is filed in the prescribed form (Form 7A) under Rule 55. The representation should state the grounds for opposition and accompanying evidence, if any, and a request for a hearing, if so desired.
According to the provisions of the Rules, the grant of a patent cannot be earlier than six months after the publication of the application. Under these circumstances, a pre-grant representation is considered after a request for examination has been made.
Common Grounds for Pre-Grant Opposition
As described in Section 25(1) of the Act, the following non-exhaustive grounds can be described as:
Wrongful obtaining of the invention
Prior publication or anticipation
Prior-prior claims
Prior publication or prior public use of an invention in India
Lack of inventive step
Subject matter not qualifying as an invention, or being non-patentable
Insufficient or unclear disclosure
Failure to provide information under Section 8 of the Act
Incorrect disclosure of biological material
Traditional or indigenous knowledge-related prior publication
These grounds have been exhaustively described in the Indian Patent Act, and therefore, an opposition must be lodged based on the statutory grounds as opposed to general opposition to a patent application.
Post-Grant Opposition: What Has Changed?
When Can A Post-Grant Opposition Be Filed?
Post-grant opposition is filed after a patent is granted.
According to Section 25(2) of the Act, a notice of opposition can be filed by any interested person within one year of the published grant of a patent.
This notice is filed using Form 7 under Rule 55A.
The term “interested person” may be construed to include researchers working in the relevant field, organizations involved in the manufacture or sale of the patented article, and others involved in activities of interest, as recognized in the Act and Patent Office practice.
Grounds for Post-Grant Opposition
The grounds are similar to those prescribed in Section 25(2) of the Act, and include:
Obtaining a patent by fraud
Published prior to the patent or by anticipation
Earlier priority
Known to the public
Lack of an inventive step
Non-patentable subject matter
Insufficient disclosure
Section 8
Convention requirement
Biological material
Traditional and indigenous knowledge
As per the Act, these are the only grounds on which an opposition may be made.
Pre Grant vs Post Grant Opposition: Key Differences
| Aspects | Pre Grant Opposition | Post Grant Opposition |
|---|---|---|
| Type | Prior to grant of the patent | Post grant of the patent |
| Provisions | Section 25(1) | Section 25(2) |
| Initiator | Any person | Any person interested |
| Form | 7A | 7 |
| Time | After publication and before grant | Within one year after the publication of the grant |
| Reason | To challenge the grant of application | To challenge a granted patent |
| Board | Not the same statutory post-grant mechanism | Opposition Board is constituted |
| Result | Grant proceeds, Specification may be amended, or Application may be refused | Patent may be maintained, amended, or revoked |
Key differences should be noted when evaluating whether to oppose third party issued patents or when responding to an opposition based on your invention.
How Does the Opposition Process Work?
Step 1: Identify the Patent and Relevant Timelines
Have the patent grant and/or application status been determined? This greatly affects each option for the opposition process.
Step 2: Prior Art and Patent Analysis
Relevant patents, cases, and publications should be identified, dated, and published prior to the patent application publication date to determine the existence of statutory opposition grounds.
This is the time where a prior art or patentability search is highly beneficial.
Step 3: Select the Opposition Grounds
Evidence should be relevant and connect to the specific legal requirements for at least one ground contained in Section 25 of the Patent Act.
Step 4: Required Filings
Representation for pre-grant opposition is filed in Form 7A, while post-grant opposition is filed in Form 7. Supporting statements and evidence are done in accordance with the prescribed procedure.
Step 5: Responding to the Proceedings
In pre-grant proceedings, the applicant may file evidence in response. The Controller may require amendment, reject the representation, or refuse the application.
For post-grant opposition, the Controller constitutes an Opposition Board. The Board examines the opposition and makes recommendations. The Controller then decides whether to maintain the patent as is, amend the patent, or revoke the patent, after considering the submissions and hearing the arguments of the parties.
Key Documents and Evidence
Factors that may govern an opposition strategy include:
- Patent applications or granted patents
- Relevant prior art
- Patent specifications and claims
- Scientific or technical publications
- Evidence of public use or disclosure
- Correspondence and records
- Statements by the opponent, if required
- Technical Evidence
- Expert analysis, if necessary
- Prescribed forms, if needed
- Relevant procedure
The exact evidence required will depend on the specific grounds and facts of the case.
Who Could Benefit From Support For Patent Opposition?
Professional support for patent opposition is ideal for:
Start-ups that may be infringing upon other organizations’ rights
Inventors and innovators opposing applications that affect their technologies
Inventors working on similar or the same technologies
MSMEs operating in the same industry
Design teams analyzing patent risks before initiating a product launch
Corporate houses managing large portfolios of patents
Global companies entering India
Patent owners responding to oppositions
Companies in Bangalore and other regions in India would benefit from early IP assessments, as they help avoid more expensive and challenging conflicts.
Common Mistakes To Avoid
- Overlooking a Relevant Deadline
Given the nature of opposition that is time-bound and has a statutory window of one year from publication of grant in the case of a post-grant opposition; overlooking a relevant deadline is a major issue.
- Relying on Similar Patent(s)
Just having a similar patent document does not provide grounds for a winning opposition. There are several factors that require analysis which include claims, priority dates, disclosure, and requirements of the statute.
- Presenting Weak or Fictitious Evidence
Patent opposition proceedings rely upon technical and documentary evidence, hence unsubstantiated remarks would be detrimental to the case.
- Overlooking Claims Construction
During patent disputes, the interpretation of claims plays a huge role, and hence the opposition should focus on the claims and the language of the patent, and not on the general idea of the invention.
- Viewing Opposition In Isolation
Opposition is often one of many strategies within a single integrated IP strategy which may include patent filing, freedom to operate, license, patent validity, and other portfolio management strategies.
Benefits of Professional Patent and IP Support
Opposing patents combines technical and procedural analysis and legal frameworks. Professional assistance can help you with the following:
Prior art analysis and patent landscape
Claim-by-claim assessment
Development of an opposition strategy
Evidence organization
Drafting of opposition documents
Communication with the patent office
Organizational support for hearings
Analysis of patent risk
International patent strategy
Innovators and businesses should aim to develop a defensible IP strategy based on existing technology, evidence, and commercial goals and legal considerations.
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For businesses operating in Bangalore, Karnataka, in India, and globally, MakeMyPatent offers integrated IP services and support which combines expert resources with AI, confidentiality, and built-in flexibility.
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Frequently Asked Questions
- What is the meaning of pre-grant opposition in India?
This refers to a representation filed against a patent application after publication, but before grant of the patent. It is filed as per Section 25(1) of the act, against any of the statutory grounds by any person.
- What is post-grant opposition?
A patent granted is challenge-able by any person interested within a period of one year from the date of publication of the grant.
- What is the difference between pre-grant and post-grant opposition?
As far as the timing of the filing of the opposition is concerned, pre-grant opposition is filed prior to the grant of the patent, and post grant opposition is filed after the grant of the patent. Post grant opposition can be filed by “a person interested” while pre grant opposition can be filed by any person.
- Does a patent opposition result in an invalidation of the patent?
Post grant opposition results in either the patent being retained, or amended, or revoked based on the proceedings and the decision of the Controller.
- Do I need to consult a patent professional before initiating the proceedings for an opposition?
Yes. Opposition can become complicated due to various types of technical evidences, analysis of claims, prior art, deadlines, and various other procedural requirements. A registered patent professional will assess your situation and advise you the best way to proceed.
Get Professional Assistance with Patent Prosecution
The Indian patent system has provisions for patent opposition while defending your innovation, or when assessing a competing patent. Knowing the difference between pre-grant and post-grant patent opposition helps organizations, inventors, startups, researchers, and MSMEs make informed decisions regarding their IP.
For patent opposition in India and patent drafting, filing, patentability search, Patent Office objections, and broader IP strategies, MakeMyPatent provides the requisite assistance.
MakeMyPatent provides expertise in preparing patent applications through their patent filing, patent drafting support, and patent protection services.
Disclaimer: This blog provides general educational information only and does not serve as formal legal counsel. Please address your specific invention or IP requirements directly with a registered patent professional.
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