Chapter 5 : The Patent Act,1970

Section 25: Opposition proceedings to grant of patents

This is one of the most important sections in the Act. It provides two “windows” for the public to challenge a patent.

(1) Pre-Grant Opposition

This is the first window, which happens before the patent is granted.

(1) What it says: 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…
- In plain English: At any time after an application is published (at 18 months) but before it is officially granted, “any person” (this can be anyone—a competitor, an NGO, a member of the public, even anonymously) can file a written argument (a “representation”) telling the Controller why the patent should not be granted.
- Real-world example: A university researcher reads a published patent application and realizes it’s identical to a paper she published 3 years ago. She (or “any person”) can write to the Patent Office, attach her paper as proof, and argue the patent should be refused because it’s not new.

The opposition must be based on one of the following specific grounds:

(a) What it says: …wrongfully obtained the invention…
- In plain English: The applicant stole the invention from the person opposing.
- Example: “The applicant was my employee, saw my invention, and filed for it in his own name. I am the true inventor.”
(b) What it says: …invention… has been published before the priority date…
- In plain English: The invention is not new. It was already published in an old patent, a scientific journal, a website, or any other document, anywhere in the world.
- Example: “This patent application for a ‘new’ engine part is identical to a design shown in a 1998 US patent.”
(c) What it says: …invention… is claimed in a claim of a complete specification… [with an earlier priority date].
- In plain English: Another patent application was filed earlier (or has an earlier priority date) that already claims this exact invention.
- Example: “We filed our patent for this same drug 6 months before this applicant. Our application hasn’t been granted yet, but we have the earlier date.”
(d) What it says: …invention… was publicly known or publicly used in India before the priority date…
- In plain English: The invention is not new because people in India already knew about it or were using it.
- Example: “This ‘new’ weaving process has been used by weavers in Varanasi for the last 50 years.”
(e) What it says: …invention… is obvious and clearly does not involve any inventive step…
- In plain English: The invention is “obvious.” Even if it’s slightly “new,” it’s just a trivial change that any person skilled in the field would have thought of.
- Example: “The prior patent shows a blue chair. This application is for a red chair. This is an obvious color change and lacks an ‘inventive step.'”
(f) What it says: …the subject of any claim… is not an invention… or is not patentable under this Act;
- In plain English: The application is trying to patent something that is not allowed under Section 3 or 4.
- Example: “This application is for a new business method (Section 3(k)) or a new medical treatment (Section 3(i)). These are not patentable inventions in India.”
(g) What it says: …complete specification does not sufficiently and clearly describe the invention…
- In plain English: The application is vague and doesn’t provide enough detail (as required by Section 10) for a skilled person to actually make and use the invention.
- Example: “The application claims a new chemical but does not explain the steps to synthesize it or provide any experimental data. It’s impossible to recreate.”
(h) What it says: …applicant has failed to disclose… the information required by section 8 or has furnished… false… information.
- In plain English: The applicant lied or failed to tell the Controller about the other patent applications they filed for the same invention in other countries (as required by Section 8).
- Example: “The applicant told the Controller they had no foreign filings, but we have found this corresponding application they filed in the USA, which the US examiner has already rejected.”
(i) What it says: …in the case of a convention application, the application was not made within twelve months from the date of the first application…
- In plain English: The applicant is claiming an early priority date from another country but missed the 12-month deadline to file in India.
- Example: “The applicant claims priority from a US application filed on Jan 1, 2022. They filed this Indian application on March 1, 2023. They are 2 months too late and are not entitled to the priority date.”
(j) What it says: …complete specification does not disclose or wrongly mentions the source or geographical origin of biological material…
- In plain English: The applicant lied about or hid the source of the biological material (e.g., a plant, a micro-organism) used in the invention.
- Example: “The applicant claims to have invented this new yeast strain, but they actually ‘discovered’ it in a sample of soil taken from a protected national park and did not declare its origin.”
(k) What it says: …invention… is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
- In plain English: The invention is not new; it’s just a rip-off of “Traditional Knowledge” (TK).
- Example: “This ‘new’ herbal medicine is just a formulation of turmeric and black pepper, which has been part of traditional Ayurvedic knowledge for centuries.”
End of (1): …the Controller shall, if requested… hear him and dispose of such representation…
- In plain English: The Controller must consider this written opposition. If the person opposing requests a hearing, the Controller must grant it before making a final decision to either grant the patent or refuse the application.

(2) Post-Grant Opposition

This is the second window, which happens after the patent is granted.

(2) What it says: 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… any person interested may give notice of opposition…
- In plain English: For one year after the date the patent is officially granted and published in the journal, “any person interested” can file a formal “Notice of Opposition” to try and revoke it.
- Key Difference: The person opposing must be a “person interested.” This is a stricter standard than “any person” in the pre-grant stage. It means a person who has a direct commercial, manufacturing, or research interest in the field (e.g., a business competitor, a university researcher in the same field). A random member of the public cannot file a post-grant opposition.
- Grounds for Opposition (a) to (k): The legal grounds for a post-grant opposition are identical to the (a) through (k) grounds listed above for pre-grant opposition.
(3) What it says: (a) …the Controller shall notify the patentee. (b) …the Controller shall… constitute a Board to be known as the Opposition Board… and refer such notice… to that Board for examination and submission of its recommendations…
- In plain English: When a post-grant opposition is filed:
  1. The Controller tells the patent owner (patentee).
  2. He must create a special committee called an “Opposition Board” (made of 3 patent officers) to review all the evidence from both sides.
  3. This Board will then write a recommendation (like an internal report) and give it to the Controller, suggesting whether the patent should be kept, amended, or revoked.
(4) What it says: On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent.
- In plain English: This is the final decision. The Controller (the boss) will:
  1. Read the Board’s recommendation.
  2. Hold a formal hearing with both the patentee and the opponent.
  3. Make a final, binding decision: Maintain (the patent is valid), Amend (the patent is valid only if certain claims are changed or deleted), or Revoke (the patent is cancelled).
(5) What it says: …in respect of the ground mentioned in clause (d) or clause (e)… the Controller shall not take into account any personal document or secret trial or secret use.
- In plain English: When deciding if an invention was “publicly known” (d) or “obvious” (e), the Controller cannot use evidence of “secret use” (e.g., “I was secretly using this in my factory, but I never told anyone”). It must have been public knowledge or public use.
(6) What it says: In case the Controller issues an order… that the patent shall be maintained subject to amendment… the patent shall stand amended accordingly.
- In plain English: If the Controller orders an amendment, the patent register is updated, and the patent is legally treated as if it had been granted with those amendments all along.
- Real-world example: The Controller revokes claims 1-5 but maintains claims 6-10. The patent is now only valid for claims 6-10.

Section 26: In cases of “obtaining” Controller may treat the patent as the patent of opponent

This section explains the unique remedy available when you (the opponent) successfully prove in a post-grant opposition that the patentee stole the invention from you.

(1) What it says: Where… the Controller finds that… the invention… was obtained from the opponent… and revokes the patent… he may, on request by such opponent… direct that the patent shall stand amended in the name of the opponent;
- In plain English: If you successfully prove that the patentee (let’s call him Rohan) stole your invention (as per ground 25(2)(a)), the Controller doesn’t just have to cancel Rohan’s patent. You (the true inventor) can request that the Controller transfer the patent into your name.
- Real-world example: Asha files a post-grant opposition against Rohan’s patent. She provides lab notebooks and emails proving Rohan was her employee who stole her design. The Controller revokes Rohan’s patent. Asha files a request under this section. The Controller then issues an order amending the register, and the patent is re-issued with Asha as the new patent owner (patentee).
(b) What it says: a part of an invention… was so obtained from the opponent, he may pass an order requiring that the specification be amended by the exclusion of that part…
- In plain English: If Rohan’s patent claims two things (Invention A + Invention B), and Asha proves Rohan only stole Invention B, the Controller doesn’t have to revoke the whole patent. He can simply order Rohan to delete all claims related to Invention B.
- Real-world example: Rohan’s patent claims “1. A new bicycle frame” and “2. A new gear-shift mechanism.” Asha proves Rohan stole the gear-shift design from her. The Controller orders Rohan to amend his patent, deleting all claims to the gear-shift. Rohan gets to keep his patent, but only for the bicycle frame.
(2) What it says: Where an opponent has… filed an application for a patent for an invention which includes the whole or a part of the invention held to have been obtained from him… the Controller may treat such application… as having been filed… on the date on which the corresponding document was… filed by the patentee in the earlier application…
- In plain English: This is a powerful provision. Let’s say Asha filed her own patent application for the gear-shift, but she filed it after Rohan did. When she wins her opposition case (proving theft), the Controller can “ante-date” her application. He can treat her application as if it were filed on the same day Rohan filed his stolen one.
- Real-world example:
  1. Rohan (thief) files for the gear-shift: Jan 1, 2024.
  2. Asha (true inventor) files her own application: June 1, 2024.
  3. A competitor publishes a similar design: March 1, 2024.
  4. Normally, Asha’s application would be rejected because of the March 1 publication.
  5. But, after Asha wins her opposition against Rohan, the Controller moves her application’s date from June 1 back to Jan 1, 2024. Now, her application comes before the March 1 publication, and she can get her patent.

Section 27: Refusal to patent without opposition

What it says: [Omitted by the Patents (Amendment) Act, 2005,]
In plain English: This section is gone. It used to give the Controller the power to refuse a patent on grounds even if no one had filed an opposition.
Why was it removed? This power is now covered by the modern examination process. The Controller can already refuse an application under Section 15 (“Power of Controller to refuse”) based on the Examiner’s report (Section 12/13). A separate section was no longer needed.

Section 28: Mention of inventor as such in patent

This section separates inventorship (who thought of the idea) from ownership (who owns the patent).

(1) What it says: If the Controller is satisfied… (a) that the person… is the inventor… and (b) that the application… is a direct consequence of his being the inventor, the Controller shall… cause him to be mentioned as inventor in any patent granted…
- In plain English: The actual, human inventor of an invention has the legal right to be named as the inventor on the patent document, even if they don’t own the patent.
- Real-world example: Dr. Priya is an employee at a large pharmaceutical company. She invents a new drug. The company will be the “applicant” and will own the patent (as per her employment contract). However, Dr. Priya can request to be mentioned as the inventor. The granted patent will state: “Applicant: BigPharma Ltd.” and “Inventor: Dr. Priya.”
Proviso: Provided that the mention of any person as inventor… shall not confer or derogate from any rights under the patent.
- In plain English: Just because Dr. Priya is named as the “Inventor,” it does not give her any ownership rights to the patent. The company still owns 100% of the patent and the profits. This is purely for her professional credit and recognition.
(2) What it says: A request… may be made in the prescribed manner by the applicant… or (where the person alleged to be the inventor is not the applicant…) by the applicant and that person.
- In plain English: The request to name an inventor is typically filed jointly by the company (applicant) and the inventor (employee).
(3) What it says: If any person… desires to be mentioned as aforesaid, he may make a claim in the prescribed manner…
- In plain English: If the company (applicant) “forgets” or wrongly names someone else, an inventor can file a claim on their own to be mentioned.
- Real-world example: BigPharma Ltd. files a patent naming Dr. Priya’s manager as the inventor. Dr. Priya can file a claim with the Controller, providing evidence (lab notebooks) that she was the true inventor and should be named.
(4) What it says: A request or claim under the foregoing provisions… shall be made before the grant of patent.
- In plain English: Any dispute about who is named as the inventor must be sorted out before the patent is granted.
(5) What it says: [Omitted by the Patents (Amendment) Act, 2005]
- In plain English: This sub-section, which dealt with appeals for inventor disputes, was removed and its provisions were merged into the new, centralized appeal process (Chapter XIX).
(6) What it says: Where a claim is made under sub-section (3), the Controller shall give notice… to every applicant… and to any other person… interested; and… shall… hear the person…
- In plain English: If Dr. Priya does file a claim (from (3)) stating she is the true inventor, the Controller must notify the company (BigPharma) and her manager. The Controller will then hold a hearing, listen to all sides, and decide who should be named.
(7) What it says: Where any person has been mentioned as inventor… any other person who alleges that he ought not to have been so mentioned may… apply… for a certificate to that effect… and the Controller… shall rectify the specification and the register accordingly.
- In plain English: This is the reverse. After a patent is granted, if someone was wrongly named as an inventor, another person can apply to have that name removed from the patent record.
- Real-world example: A patent is granted naming Dr. Priya and Dr. Suresh as co-inventors. A year later, it’s proven that Dr. Suresh’s contributions were not inventive. Dr. Priya can apply to the Controller to issue a certificate and remove Dr. Suresh’s name from the official register.