The Grounds of Opposition
Chapter Fifty-Seven
Syllabus topic 2.5, "Opposition to grant of Patents"
Pages 233 to 236 of 524
In one line
The eleven grounds of opposition and the seventeen grounds of revocation overlap heavily but not completely, and knowing which are in one list and not the other is what an examination question is testing.
In the wording a student can write in an exam: the grounds of opposition are the same in section 25(1) and section 25(2) of the Patents Act, 1970, being clauses (a) to (k) of each, while the grounds of revocation in section 64(1) run from clause (a) to clause (q) and include several grounds the opposition list does not contain.
The two lists, side by side
| Subject | Opposition, s.25(1) and (2) | Revocation, s.64(1) |
|---|---|---|
| Wrongful obtaining | (a) | (c) |
| Applicant not entitled to apply | not listed | (b) |
| Prior claiming in an earlier Indian patent | (c) | (a) |
| Prior publication | (b) | within (e) |
| Prior public knowledge or use in India | (d) | within (e) |
| Obviousness | (e) | (f) |
| Not an invention | (f), first limb | (d) |
| Not patentable under the Act | (f), second limb | (k) |
| Insufficiency, and best method | (g) | (h) |
| Claim not clearly defined or not fairly based | not a separate ground | (i) |
| Not useful | not listed | (g) |
| False suggestion or representation | not listed | (j) |
| Secret use in India before the priority date | not listed | (l) |
| Section 8 failure or false information | (h) | (m) |
| Convention application out of time | (i) | not listed |
| Contravention of section 35 or section 39 | not listed | (n) |
| Amendment obtained by fraud | not listed | (o) |
| Source and geographical origin of biological material | (j) | (p) |
| Traditional knowledge of a local or indigenous community | (k) | (q) |
Read the table in both directions. Seven grounds are available on revocation and not on opposition: the applicant not being entitled to apply, want of utility, a claim not clearly defined or not fairly based, false suggestion or representation, secret use in India, contravention of section 35 or section 39, and an amendment obtained by fraud. One ground is available on opposition and not on revocation: that a convention application was made out of the twelve months.
The eleven grounds worked
(a) Wrongful obtaining. That the applicant or patentee, or the person under or through whom he claims, wrongfully obtained the invention or any part of it from the opponent or from a person under or through whom the opponent claims. The opponent must be the person from whom it was taken, which is why this ground is narrow. Chapter 580 works section 26, which lets the Controller treat the patent as the opponent's.
(b) Prior publication. That the invention so far as claimed has been published before the priority date of the claim, either in an Indian patent specification filed on or after 1 January 1912, or in India or elsewhere in any other document. Its proviso removes the second limb where the publication does not anticipate by virtue of section 29(2) or (3), which chapter 410 works.
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