Intellectual
Property Rights
Patents
Act, 1970
CHAPTER V: OPPOSITION TO GRANT OF PATENT
25. Opposition to grant of patent
(1) At any time within four months from
the date of advertisement of the acceptance of a complete specification
under this Act (or within such further period not exceeding one month
in the aggregate as the Controller may allow on application made to him
in the prescribed manner before the expiry of the four months aforesaid)
any person interested may give notice to the Controller of opposition
to the grant of the patent on any of the following grounds, namely,-
(a) that the applicant for the patent
or the person under or through whom he claims, wrongfully obtained the
invention or any part thereof from him or from a person under or through
whom he claims;
(b) that the invention so far as claimed
in any claim of the complete specification has been published before the
priority date of the claim-
(i) in any specification filed in pursuance
of an application for a patent made in India on or after the 1st day of
January, 1912; or
(ii) in India or elsewhere, in any other
document:
PROVIDED that the ground specified in
sub-clause (ii) shall not be available where such publication does not
constitute an anticipation of the invention by virtue of sub-section (2)
or sub-section (3) of section 29;
(c) that the invention so far as claimed
in any claim of the complete specification is claimed in a claim of a
complete specification published on or after the priority date of the
applicant's claim and filed in pursuance of an application for a patent
in India, being a claim of which the priority date is earlier than that
of the applicant's claim;
(d) that the invention so far as claimed
in any claim of the complete specification was publicly known or publicly
used in India before the priority date of that claim.
Explanation: For the purposes of this
clause, an invention relating to a process for which a patent is claimed
shall be deemed to have been publicly known or publicly used in India
before the priority date of the claim if a product made by that process
had already been imported into India before that date except where such
importation has been for the purpose of reasonable trial or experiment
only;
(e) that the invention so far as claimed
in any claim of the complete specification is obvious and clearly does
not involve any inventive step, having regard to the matter published
as mentioned in clause (b) or having regard to what was used in India
before the priority date of the applicant's claim;
(f) that the subject of any claim of
the complete specification is not an invention within the meaning of this
Act, or is not patentable under this Act;
(g) that the complete specification does
not sufficiently and clearly describe the invention or the method by which
it is to be performed;
(h) that the applicant has failed to
disclose to the Controller the information required by section 8 or has
furnished the information which in any material particular was false to
his knowledge;
(i) that in the case of a convention
application, the application was not made within twelve months from the
date of the first application for protection for the invention made in
a convention country by the applicant or a person from whom he derives
title,
but on no other ground.
(2) Where any such notice of opposition
is duly given, the Controller shall notify the applicant and shall give
to the applicant and the opponent an opportunity to be heard before deciding
the case.
(3) The
grant of a patent shall not be refused on the ground stated in clause
(c) of sub-section (1) if no patent has been granted in pursuance of the
application mentioned in that clause; and for the purpose of any inquiry
under clause (d) or clause (e) of that sub-section, no account shall be
taken of any secret use.
26. In cases of "obtaining" controller may treat application
as application of opponent
(1) Where
in any opposition proceeding under this Act-
(a) the Controller finds that the invention,
so far as claimed in any claim of the complete specification was obtained
from the opponent in the manner set out in clause (a) of sub-section (1)
of section 25 and refuses the application on that ground, he may, on request
by such opponent made in the prescribed manner, direct that the application
shall proceed in the name of the opponent as if the application and the
specification had been filed by the opponent on the date on which they
were actually filed;
(b) the Controller finds that a part
of an invention described in the complete specification was so obtained
from the opponent and passes an order requiring that the specification
be amended by the exclusion of that part of the invention, the opponent
may, subject to the provisions of sub-section (2), file an application
in accordance with the provisions of this Act accompanied by a complete
specification for the grant of a patent for the invention so excluded
from the applicant's specification, and the Controller may treat such
application and specification as having been filed, for the purposes of
this Act relating to the priority dates of claims of the complete specification,
on the date on which the corresponding document was or was deemed to have
been filed by the earlier applicant, but for all other purposes the application
of the opponent shall be proceeded with as an application for a patent
under this Act.
(2) Where
an opponent has, before the date of the order of the Controller requiring
the amendment of a complete specification referred to in clause (b) of
sub-section (1), filed an application for a patent for an invention which
included the whole or a part of the invention held to have been obtained
from him and such application is pending, the Controller may treat such
application and specification insofar as they relate to the invention
held to have been obtained from him, as having been filed, for the purposes
of this Act relating to the priority dates of claims of the complete specification,
on the date on which the corresponding document was or was deemed to have
been filed by the earlier applicant, but for all other purposes the application
of the opponent shall be proceeded with as an application for a patent
under this Act.
27. Refusal of patent without opposition
If at any
time after the acceptance of the complete specification filed in pursuance
of an application for a patent and before the grant of a patent thereon
it comes to the notice of the Controller otherwise than in consequence
of proceedings in opposition to the grant under section 25, that the invention,
so far as claimed in any claim of the complete specification, has been
published before the priority date of the claim-
(a) in any specification filed in pursuance
of an application for a patent made in India and dated on or after the
1st day of January, 1912;
(b) in any other document in India or
elsewhere,
the Controller may refuse to grant the
patent unless, within such time as may be prescribed, the complete specification
is amended to his satisfaction:
PROVIDED
that the Controller shall not refuse to grant the patent on the ground
specified in clause (b) if such publication does not constitute an anticipation
of the invention by virtue of sub-section (2) or sub-section (3) of section
29.
28. Mention of inventor as such in patent
(1) If
t he controller is satisfied, upon a request or claim made in accordance
with the provisions of this section-
(a) that the person in respect of or
by whom the request or claim is made is the inventor of an invention in
respect of which application for a patent has been made, or of a substantial
part of that invention; and
(b) that the application for the patent
is a direct consequence of his being the inventor,
the Controller shall, subject to the provisions
of this section, cause him to be mentioned as inventor in any patent granted
in pursuance of the application in the complete specification and in the
register of patents:
PROVIDED that the mention of any person
as inventor under this section shall not confer or derogate from any rights
under the patent.
(2) A request that any person shall be
mentioned as aforesaid may be made in the prescribed manner by the applicant
for the patent or (where the person alleged to be the inventor is not
the applicant or one of the applicants) by the applicant and that person.
(3) If any person [other than a person
in respect of whom a request in relation to the application in question
has been made under sub-section (2),] desires to be mentioned as aforesaid,
he may make a claim in the prescribed manner in that behalf.
(4) A request or claim under the foregoing
provisions of this section shall be made not later than two months after
the date of advertisement of acceptance of the complete specification
or within such further period (not exceeding one month) as the Controller
may, on an application made to him in that behalf before the expiration
of the said period of two months and subject to the payment of the prescribed
fee, allow.
(5) No request or claim under the foregoing
provisions of this section shall be entertained if it appears to the Controller
that the request or claim is based upon facts which, if proved in the
case of an opposition under the provisions of clause (a) of sub-section
(1) of section 25 by the person in respect of or by whom the request or
claim is made, would have entitled him to relief under that section.
(6) Subject to the provisions of sub-section
(5), where a claim is made under sub-section (3), the Controller shall
give notice of the claim to every applicant for the patent (not being
the claimant) and to any other person whom the Controller may consider
to be interested; and before deciding upon any request or claim made under
sub-section (2) or sub-section (3), the Controller shall, if required,
hear the person in respect of or by whom the request or claim is made,
and, in the case of a claim under sub-section (3), any person to whom
notice of the claim has been given as aforesaid.
(7) Where any person has been mentioned
as inventor in pursuance of this section, any other person who alleges
that he ought not to have been so mentioned may at any time apply to the
Controller for a certificate to that effect, and the Controller may, after
hearing, if required, any person whom he may consider to be interested,
issue such a certificate, and if he does so, he shall rectify the specification
and the register accordingly.
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