•Publication of Application
–Shall be published after 18 months except in below cases
•Secrecy direction is imposed under s. 35
•Has been abandoned under s. 9(1)
•Has been withdrawn 3 months prior to the 18-month-period
•Request for Examination
–Request by the applicant/any interested party
•Request for Examination
–Controller refers it to examiner for making a report including below things
•Whether application, specification etc. comply with the Act/rules
•Whether there is any lawful ground of objection
•Result of investigations under s. 13 (prior-art search)
•Examination Report to be sent to applicant
•If invention anticipated by prior claim, then opportunity to amend the application
–Amended application to be examined just like any original specification
Opposition to Patent (s. 25)
•Where application has been published but a patent has not been granted, any person may file opposition on the following grounds
–Applicant wrongfully obtained the invention from him
•Burden of proof is on the opponent
•However if the CS had been communicated to the applicant by the opponent (who invented the invention first), onus shifts on the applicant
•Invention claimed in CS has been published before the priority date in any specification in India
–Press Metal Corp Ltd v. Noshir Sorabji Pochkhanwalla, 1983
–Published in two books
–Gave the invention to others for testing
–Hence it not novel
•Invention claimed in CS published in any CS after priority date but being a claim of which priority date is earlier than applicant
•Invention publicly known or publicly used in India before the priority date
•Invention is obvious and clearly does not involve any inventive step
•Subject of the invention is not an ‘invention’ or is not patentable under the Act
•CS does not sufficiently and clearly describe the invention or method by which it is to be performed
•applicant has failed to disclose to the Controller the information required by section 8 or provided false info
–S. 8: Information and undertaking regarding foreign applications
•In case of convention application, application not made within 12 months
–Paris Convention route (177 countries)
–Patent Cooperation Treaty route (152 countries)
•Wrongly/does not mention the source or geographical origin of biological material used for the invention
•Invention claimed is anticipated by the local community because of their knowledge
•These are the only grounds.
Can’t be opposed on any other grounds
•Available to any person
–Before the grant or
–After the grant but before the completion of one year
Anticipation: Chapter VI
•To expect/predict; be earlier than some one else
•Anticipation by
–S. 29: Previous Publication
–S. 30:Previous Communication to the Government
–S. 31: Public Display etc.
–S. 32: Public Working
–S. 33: Use and Publication after PS
•S. 29 – Anticipation by previous publication
•Invention shall not be deemed to have been anticipated
–by reason only that it was published before the priority date
–If the patentee proves:
a)Matter published was obtained from him and published without his consent and
b)He filed an application as soon as he came to know of such publication
–Provided this sub-section not to apply if
•The invention has been worked commercially by the patentee in India (except for purpose of reasonable trial)
• Any other application in respect of the same invention
–made in contravention of the rights of inventor
–Or Used or published without his consent by that other applicant
•Lallubhai C Jariwala v. Chimanlal & Co. (1936)
–Once public get to know of the invention before application, then subsequent patent granted not valid
•Not necessary that people should actually read it
–Enough if the publication was accessible and open to public
–E.g. Library of Govt Patent Office, any public library etc.
•Such prior publication must be sufficient and complete
•S. 30: Previous Communication to the Government not deemed as anticipation
–To investigate the invention or its merits
–Or anything done in consequence of such communication for the purpose of such investigation
•S. 31 – Public Display not deemed as anticipation
•Display at an industrial or other exhibition or
–Use of invention at such place for purposes of display
–With the consent of the inventor
•Publication of any description of the invention in consequence of the above
•Once it is displayed, any person uses it without the consent of the inventor
•Presentation of a paper by the inventor before any learned society
•Within 12 months from such publication, an application must have been filed.
•S. 32: Public Working (Reasonable Trial)
–Within one year before the priority date
–Publicly worked in India by the applicant/ patentee/ any other person with his consent
–It was reasonably necessary to conduct the trial considering the nature of the invention
•S. 33: Use and Publication after PS
–The Controller shall not refuse to grant the patent
–And the patent shall not be revoked or invalidated by reason only of this ground
–Any use, publication in India or elsewhere after PS is filed
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