Pre-Grant and Post-Grant Opposition

1. Why opposition

Patent offices examine with limited time and limited access to prior art. Opposition lets third parties, who often know the field better, bring evidence before or soon after grant, more cheaply than litigation. In India, pre-grant opposition was retained and widened in 2005 as a safeguard when product patents for medicines were introduced, so that patient groups and generic firms could resist weak patents before they were granted. Novartis began with pre-grant oppositions.

2. Pre-grant opposition (s.25(1))

• Who: any person. No interest need be shown.
• When: after the application has been published and before grant.
• How: a written representation to the Controller on one or more of the listed grounds. The Patents (Amendment) Rules, 2024 introduced a fee for the representation and provide that the Controller first considers whether a prima facie case is made out; if it is, the applicant is notified and may reply with a statement and evidence, and the Controller decides after hearing, if requested. The application cannot be granted until the representation is decided.

3. Post-grant opposition (s.25(2))

• Who: any person interested, defined in s.2(1)(t) to include a person engaged in or promoting research in the same field.
• When: at any time after grant but before the expiry of one year from the date of publication of grant.
• How: notice of opposition to the Controller. The Controller constitutes an Opposition Board (s.25(3)) to examine the notice and the patentee's reply and evidence and make a recommendation. The Controller then hears both parties and orders that the patent be maintained, amended or revoked (s.25(4)). Appeal lies to the High Court (s.117A).

4. The grounds (common to both)

1. (a) wrongful obtaining of the invention from the opponent;
2. (b) anticipation by publication before the priority date in any specification filed in India on or after 1 January 1912, or in India or elsewhere in any other document;
3. (c) prior claiming in a complete specification with an earlier priority date published after the applicant's priority date;
4. (d) prior public knowledge or public use in India before the priority date;
5. (e) obviousness and lack of inventive step;
6. (f) not an invention or not patentable under the Act (ss.3, 4);
7. (g) insufficient description of the invention or the method;
8. (h) failure to disclose information on foreign applications under s.8, or furnishing false information;
9. (i) for a convention application, not filed within twelve months of the first foreign application;
10. (j) non-disclosure or wrong mention of the source or geographical origin of biological material;
11. (k) anticipation having regard to traditional knowledge of any community, in India or elsewhere, oral or otherwise.

The list is exhaustive: an opposition can be based only on these grounds (“but on no other ground”). Lack of industrial application, for example, is argued as “not an invention” under (f).

5. Natural justice in opposition

Because the Controller acts quasi-judicially, courts insist on fair procedure. The Delhi, Madras and Bombay High Courts have, in writ petitions and appeals, set aside orders where the Controller had not given a party a hearing on a ground raised, or had decided without considering the evidence, and have required reasoned orders dealing with each ground of opposition. Section 80 and the Rules require a hearing before an adverse exercise of discretion. Courts have also held that an Opposition Board's recommendation is not binding, but the Controller must give reasons if he departs from it, and the Board's report must be supplied to the parties.

6. Relation to revocation and counter-claims

After the one-year window, validity is challenged by a revocation petition under s.64 (any person interested or the Central Government, now before the High Court) or a counter-claim in an infringement suit. The Supreme Court in Dr. Aloys Wobben v. Yogesh Mehra (2014) held that the Act does not permit the same party to pursue multiple challenges on the same patent: once a person interested has chosen one of the routes (post-grant opposition, revocation petition, or counter-claim), he cannot pursue the others in parallel, though pre-grant opposition does not bar later challenges. The aim was to stop multiplicity of proceedings and conflicting decisions.

7. Assessment of the double system

For: it brings public participation, strengthens patent quality, and is a recognised TRIPS flexibility (Art 62(4) contemplates administrative revocation and opposition procedures). It has been effective in pharmaceuticals, where many secondary-patent applications have been withdrawn or refused after opposition.

Against: repeated pre-grant representations (sometimes by proxies) delay grant, and since a pre-grant opponent loses nothing by failing, the procedure can be used tactically. Industry groups have pressed for limits; the 2024 Rules respond with a fee and a prima facie screening stage. Critics of the 2024 change, including patient groups, say it may deter public-interest oppositions by individuals and NGOs.

8. Comparative note

• EPO: opposition only after grant, within nine months of publication of grant (EPC Art 99), by any person, on grounds of non-patentability, insufficiency and added matter (Art 100), before an Opposition Division, with appeal to the Boards of Appeal. A successful opposition revokes the patent in all designated states at once.
• UK: no opposition system; third-party observations before grant, and revocation proceedings or non-binding opinions by the UKIPO after grant.
• US: the America Invents Act, 2011 created post-grant review (within nine months of grant, on any invalidity ground) and inter partes review (after nine months, on prior-art patents and printed publications only) before the Patent Trial and Appeal Board. Oil States Energy v. Greene's Energy (US Supreme Court, 2018) upheld IPR as a public-rights matter that need not be tried by a court.

How this is examined

A 16-mark question on opposition proceedings or on the role of pre-grant opposition in India. Use the who-when-how structure for each kind, list the eleven grounds, add natural justice and Wobben, then the assessment and the EPO and US comparisons.