Pre grant opposition and post grant opposition are the most important parts given in the Patents Act of 1970. If the Inventor has done something with his invention which does not make his invention novel or non-obvious, then the pre-grant opposition or post grant opposition can help other parties to file the opposition against that invention so that such invention could be refused by the controller of the patent for the grant.
In this article, we are going to discuss the pre-grant opposition and post-grant opposition of a patent, where we will discuss what are pre-grant opposition and post-grant opposition with their grounds.
What is a patent?
A patent is a right given by the government to a person who has invented a new product or process and filed it in his name so that he could generate money by selling it once he gets the right over his intervention. we have written many articles related to patents.
Opposition to a patent application
Section 25 of the Patents Act of 1970 deals with the opposition of a patent in which the other party can file the opposition for a patent application which is going to be granted or which has been granted.
There are mainly two types of opposition to a patent that is pre-grant opposition and post grant opposition. So let us discuss each of these positions of a patent application by differentiating them from each other.
Pre grant opposition
section 25 (1) and rule 55(1) deals with the pre grant opposition. As per this section, any person can file the pre-grant opposition on some grounds which are given in this section.
Pre-grant opposition can be filed any time after the publication of a patent application in the official gadget but before the grant of the patent for that invention.
It means you cannot file pre-grant a position once the patent has been granted for such an invention.
The person who needs to file the pre-grant opposition on certain grounds needs to file a Form given under the Patents Act/
Form and fees
The Patents Act provides Form 7A for the pre-grant opposition. Any person who needs to file the pre grant opposition can fill this form by mentioning the grounds on which he wants to file the opposition against the patent application.
Till now, there is no fee for the Form 7A. But there are chance that the government is planning to add some fees to file the pre grant opposition. Before filing this form, kindly check the Latest fees. You can directly file this form on the official website of the Indian patent office online. The controller will check your request and will take the necessary steps to solve your problem.
Post grant opposition
Section 25 (2) and rule 55A deal with the post grant opposition. As per the section, any person interested can file the post grant opposition for a patent that has been granted but before the expiry of one year from the date of the grant.
There are only two conditions to file a post-grant opposition:
- Any person interested can file the postgrad position
- The patent should be granted but the period of grant must not be more than one year.
Any person interested means, who is working in the field that is related to such a patent, can file the post-grant opposition within one year after the grant of the patent. in simple words, you cannot file a Post grant if you fail to file it within one year after the grant. Then what can be the solution for it? The answer is the revocation of a patent. The revocation of a patent is a separate topic which will be covered in another article.
Form and Fee
Form 7 deals with the post grant opposition and this Form 7 can be filed after the grant of the patent but before the expiry of one year from the date of the grant of such patent.
The person who is going to file this form must be a person interested and must have valid grounds for the post grant opposition.
To file Post grant opposition, the person needs to fill out form 7 and upload it on the official website by paying the prescribed fee which is ₹2400 for a natural person.
Grounds for the pre-grant and post grant opposition
The Patents Act of 1970 provides the grounds on which the person can file the pre-grant opposition or post grant opposition to a patent. These grounds are almost the same only the time to file the pre-grant opposition and post grant opposition is different.
The grounds for the pre-grant opposition and post grant opposition are:
Wrongful obtained
This can be the remedy for the person if someone has wrongfully obtained the invention of a person who was the real owner of such invention. The real inventor can file the opposition by claiming that the person has obtained such an invention from him.
Comes under the prior art
If the invention is not novel and comes under any prior art or such invention was already described in any document can be revoked by opposition.
Already published
If the invention was published before the filing of the patent application, then it could be grounds for opposition.
Already in use
If the invention which is to be granted was already used in the market, in that case, the person can file the opposition application.
Lack of novelty
If your invention is not novel or lacks novelty, even then any other person can file Form 7 or 7A.
Obvious to public
The invention must not be obvious to the public or the person who is working in that field or art.
Not capable of industrial application
If the invention cannot be made or used in the industry can be the reason for opposition.
Failure to file Form 3
As per section 8 of the Patents Act, the person who has applied to the invention needs to file Form 3 within 6 months, but if the person does not file such form, it could be grounds to file the opposition.
Convention application within 12 months
To file the conviction application, the person must file it before the expiry of 12 months from the date of filing the ordinary application. But if the person fails to do so, then it is the ground for opposition.
Insufficient description
If your complete specification does not describe your invention properly then it could also be the ground for opposition. That is why it is suggested that you should take the help of a patent agent while drafting the specification for your invention.
Non-disclosure of biological material
The person using the biological material must disclose its origin and property description.
Failed to submit the biological material
As per the National Biodiversity Act, the applicant needs to submit the biological material before applying and such details should be mentioned in the application.
Traditional knowledge
The invention must not be using traditional knowledge otherwise it could be the ground for the opposition.
Invention comes under section 3 or 4 of the Act
If the invention comes under section 3 or 4 of the act, it will be the ground for the opposition.
The third party can take the benefit of these grounds by filing the pre-grant opposition or post grant opposition according to their comfort and priority. The person whose invention was wrongfully obtained can also take the help of these two remedies to secure his invention from another person who has wrongfully obtained his invention.
4 Key Types of Patent Infringement
Conclusion
Pre-grant and post grant opposition are solutions given to the person with valid grounds showing that the invention is not novel or such a person wrongly obtained the invention. If someone has wrongfully obtained your invention and filed this invention in his name, this is the best solution for you to take your invention back from such a person.
I hope now you know pre-grant opposition and post grant opposition. if you have any queries or suggestions related to this article, then you can write down in the comments.