When Can Patent Be Denied
When Can Patent Be Denied A patent is an exclusive right granted to the original inventor of a novel processor novel product, or which provides a new technical solution to a problem. It provides the exclusive right to the inventor to make, sell his invention. Therefore, it is crucial that the patent is granted in deserving cases only, which justify the exclusive right. The structure of the Opposition to a patent is such, as to prevent people from wrongfully obtaining the patent or from availing a patent for trivial or petty inventions. As per the Indian patent law, such opposition may be at the pre-grant or post-grant phase, depending on at what stage the process of granting the patent is.
After India signed the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, Section 25 of the Patent Act is amended to include an integrated system for both pre-grant and post-grant opposition.
Section 25(1) of the Patent (Amendment) Act, 2005, deals with pre-grant opposition to a patent. Under the provision, any person or third party or the government may challenge the application for the grant of a patent by informing the controller of patents in writing against the grant of a patent after the application for the patent before granting the exclusive right. ARTICLES ON WHISTLEBLOWING
Pre-grant opposition to a patent is made under the following grounds under Section (1) (a) to (k) of the Patent Amendment Act, 2005: When Can Patent Be Denied
- Obtaining the invention by wrongful means
- Prior publication of the invention
- The prior claim by an Indian application having an earlier priority date
- Prior to public knowledge or public use in India
- Obviousness and lack of inventive step
- The non-patentable subject matter as per the Patent Act
- The disclosure of the invention or the method by which it is to be performed is not sufficient and clear
- Non-disclosure of information as per the requirement or furnishing of false information by an applicant
- Patent application not filed within 12 months of filing the first application in a convention country
- Nondisclosure/wrong mention of the source or geographical origin of biological material used for the invention
- Invention anticipated with regard to traditional knowledge of any community in India or anywhere
Grounds for post-grant opposition are the same as exist for pre-grant opposition, are mentioned under Section 25(2) of the Act. However, there are some differences. Post-grant opposition is filed after the grant of patent but before the expiry of a period of one year from the date of grant of patent. In addition, while any person can initiate pre-grant opposition, but only a “person interested” can initiate a post-grant opposition. Section 2(1) (t) of the Patent (Amendment) Act, 2005, defines “person interested” as one engaged in, or in promoting, research in the same field as the one to which the invention belongs.
Another major difference is concerning infringement proceedings. These cannot be initiated during the pre-grant opposition stage as the patent is still being processed. These can be introduced during post-grant opposition.
Section 25(1) does not allow the applicant a chance to defend openly his case in a pre-grant opposition. The Patent Act also does not explicitly allow the opponent to be heard in a pre-grant opposition. The rules do not state how the hearing is conducted, though the opponent can request for it. It is solely up to the controller’s discretion, who decides the merits of the case. In a post-grant opposition, the opponent can proceed with case regardless of its merits.
The main drawback of a post-grant opposition is that the redressal is only through the courts, and therefore, it is a time-taking process due to the protracted nature of the judicial process in India. Pre-grant opposition is thus faster and more cost effective.