IPR
Topic 57 Revocation Opposition
Topic 57 — Revocation of Patents and Opposition
A patent grant is not unchallengeable. The Patents Act 1970 provides multiple mechanisms for challenging a patent — pre-grant opposition under Section 25(1), post-grant opposition under Section 25(2), revocation under Section 64, and revocation in infringement proceedings under Section 107(1). These mechanisms create a layered system of patent quality control: third parties can challenge during examination (Section 25(1)), within 12 months after grant (Section 25(2)), or at any time before expiry (Section 64). The 2005 Amendment significantly strengthened the opposition framework — making pre-grant opposition publicly available and adding post-grant opposition as a parallel remedy. This topic walks through every challenge mechanism, the substantive grounds, the procedural requirements, and the strategic considerations for both challengers and patentees.
1. Architecture of Patent Challenge Mechanisms
25(1) PRE-GRANT during examination | 25(2) POST-GRANT within 12 months | 64 REVOCATION any time before expiry | 107(1) AS DEFENCE in infringement suit |
2. Section 25(1) — Pre-Grant Opposition
Section 25(1) "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 on the ground— (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... (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; (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 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; (j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention; (k) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere..." |
A. The Eleven Pre-Grant Grounds
Sub-clause | Ground |
|---|---|
Section 25(1)(a) | Wrongful obtaining from another person. |
Section 25(1)(b) | Prior publication. |
Section 25(1)(c) | Prior claim with earlier priority. |
Section 25(1)(d) | Prior public knowledge or use in India. |
Section 25(1)(e) | Obviousness / lack of inventive step. |
Section 25(1)(f) | Not an invention or not patentable (Section 3 / Section 4). |
Section 25(1)(g) | Insufficient / unclear specification. |
Section 25(1)(h) | Section 8 non-disclosure of foreign filings. |
Section 25(1)(i) | Convention application beyond 12-month priority. |
Section 25(1)(j) | Wrongful disclosure of source/origin of biological material. |
Section 25(1)(k) | Anticipation by traditional knowledge. |
B. Procedure for Pre-Grant Opposition
Pre-grant opposition is procedurally simpler than post-grant:
- Application is published in the Patent Office Journal under Section 11A.
- Any person can file Form 7A (representation) within 6 months of publication.
- Controller examines representation; may make further inquiries.
- Applicant may respond to representation; hearing if necessary.
- Controller decides — accept, refuse, or require amendment.
- No appeal against decision in pre-grant proceedings (until grant or refusal).
✅ "Any person" — broad standing Section 25(1) uses the broad term "any person" — no requirement of being an "interested person". This makes pre-grant opposition accessible to NGOs, civil society, public health organisations, and competitors. The provision was strengthened in the 2005 Amendment to make pre-grant opposition publicly available — replacing the earlier "person interested" standard. This open-access feature has been heavily used in pharmaceutical pre-grant oppositions to ensure rigorous examination of patent applications. |
3. Section 25(2) — Post-Grant Opposition
Section 25(2) "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 of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:—" |
A. Eleven Grounds — Same as Pre-Grant
Section 25(2) lists the same eleven grounds as Section 25(1) — but applies after grant. Both provisions address the same substantive concerns; they differ in procedural framework and evidentiary requirements.
B. Procedure for Post-Grant Opposition
- "Person interested" files Form 7 (notice of opposition) within 12 months of publication of grant.
- Patentee files counter-statement within 2 months.
- Opposition Board examines the matter (3 examiners + Controller).
- Hearings, evidence, and submissions.
- Controller decides: revoke, maintain, or maintain with amendments.
- Appeal to High Court (post-2021, replacing IPAB).
C. "Person Interested" — Section 2(1)(t)
‘Person Interested [Section 2(1)(t)]’ — includes a person engaged in, or in promoting, research in the same field as that to which the invention relates. |
Post-grant opposition has narrower standing (compared to pre-grant). The "person interested" requirement excludes purely speculative challengers — limiting post-grant opposition to those with genuine commercial or research interest.
D. Comparison — Pre-Grant vs. Post-Grant
Feature | Pre-Grant (25(1)) | Post-Grant (25(2)) |
|---|---|---|
When | After publication, before grant | Within 12 months of grant |
Who | Any person | Person interested |
Form | Form 7A (representation) | Form 7 (notice of opposition) |
Controller's duty | Consider representation | Refer to Opposition Board |
Procedure | Lighter; discretionary hearing | Formal; mandatory hearing |
Evidence | Often documentary only | Documentary + oral evidence |
Appeal | Not separately appealable; only on final grant decision | Appealable to High Court |
Public participation | Open and accessible | Restricted by interest standard |
4. Section 64 — Revocation of Patents
Section 64(1) (Material Grounds) "Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, on the petition of any person interested or of the Central Government or on a counter-claim in a suit for infringement of the patent, be revoked by the High Court on any of the following grounds, that is to say— (a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India; (b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor; (c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims; (d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act; (e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents... (f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step... (g) that the invention, so far as claimed in any claim of the complete specification, is not useful; (h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed... (i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification; (j) that the patent was obtained on a false suggestion or representation; (k) that the subject of any claim of the complete specification is not patentable under this Act; (l) that the invention so far as claimed in any claim of the complete specification was secretly used in India... before the priority date of the claim; (m) that the applicant for the patent 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; (n) that the applicant contravened any direction for secrecy passed under section 35... (o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud; (p) that the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention; (q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere." |
A. Material Section 64 Grounds — Sixteen Categories
Sub-clause | Ground |
|---|---|
Section 64(1)(a) | Earlier priority valid claim. |
Section 64(1)(b) | Applicant not entitled. |
Section 64(1)(c) | Wrongfully obtained. |
Section 64(1)(d) | Not an invention. |
Section 64(1)(e) | Lack of novelty. |
Section 64(1)(f) | Lack of inventive step / obviousness. |
Section 64(1)(g) | Lack of utility. |
Section 64(1)(h) | Insufficient description. |
Section 64(1)(i) | Unclear or unsupported claim. |
Section 64(1)(j) | False suggestion / representation. |
Section 64(1)(k) | Not patentable subject matter (Section 3 / Section 4). |
Section 64(1)(l) | Secretly used before priority date. |
Section 64(1)(m) | Section 8 non-disclosure. |
Section 64(1)(n) | Contravention of secrecy directions. |
Section 64(1)(o) | Fraudulent amendment. |
Section 64(1)(p) | Wrongful disclosure of biological material origin. |
Section 64(1)(q) | Traditional knowledge anticipation. |
B. Procedure for Revocation
- Application by petition to the High Court (post-2021; previously to IPAB until April 2021).
- Notice to patentee; pleadings exchanged.
- Trial — documentary evidence, expert testimony, technical analysis.
- Decision: revocation or maintenance, with detailed reasons.
- Appeal to Supreme Court under Article 136 (special leave).
C. "Person Interested" Standing
Section 64 is open to "person interested" or "Central Government" — narrower than pre-grant opposition. The Central Government can also seek revocation through Section 65 (revocation in public interest cases).
D. Section 64 vs. Section 25(2) — Strategic Choice
✅ When to use Section 64 vs Section 25(2) Section 25(2) post-grant opposition (within 12 months of grant) operates within the Patent Office; Section 64 revocation operates before the High Court at any time during patent life. Strategic considerations: · Speed — Section 25(2) is generally faster; Section 64 is slower but more thorough. · Cost — Section 25(2) is cheaper; Section 64 involves full High Court litigation. · Evidence — Section 64 allows fuller discovery, expert evidence, cross-examination. · Late challenge — Section 64 is the only option after 12 months. · Combined with infringement — Section 107(1) revocation defence in infringement suits can be filed concurrently. |
5. Section 107(1) — Revocation as Infringement Defence
Section 107(1) provides that any Section 64 ground is available as a defence in infringement proceedings. This means:
- Defendant in infringement suit can plead all 17 Section 64 grounds.
- Counter-claim for revocation typically filed alongside written statement.
- If revocation grounds are established, the patent is revoked AND the infringement claim fails.
- Provides single-forum efficiency — High Court adjudicates both infringement and validity.
6. The Procedural Relationship — Patel Field Marshal v. P.M. Diesels
📖 Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112 Facts — A long-running rectification dispute about FIELD MARSHAL trademark. The case raised the procedural relationship between civil suit and rectification. Holding — Supreme Court (Justice Ranjan Gogoi) held that civil suit can be stayed pending rectification; rectification is the appropriate forum to challenge validity. Significance — Although Patel Field Marshal is a trademark case, the principles apply mutatis mutandis to patents. The relationship between Section 64 revocation, Section 107(1) revocation defence, and Section 25(2) post-grant opposition is procedurally complex; courts coordinate to avoid contradictory outcomes. |
7. Section 65 — Revocation in Atomic Energy / Public Interest
Section 65 "Without prejudice to the provisions contained in section 64, the Central Government may, where it appears to it that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, revoke the patent after giving the patentee an opportunity to be heard." |
Section 65 provides for revocation by the Central Government (rather than the High Court) in cases of public interest. The provision:
- Applies where the patent is "mischievous to the State or generally prejudicial to the public".
- Requires hearing the patentee.
- Targets exceptional cases — atomic energy, national security, severe public health concerns.
- Rarely invoked in practice; reserve power for emergency situations.
8. Notable Pre-Grant Opposition Cases
A. Novartis Glivec — The Pre-Grant Foundation
Novartis's patent application for the beta-crystalline form of imatinib mesylate (Glivec) was opposed pre-grant on Section 3(d) grounds. The Patent Office refused the patent in 2006, citing Section 3(d). This refusal — withstanding Novartis's Madras HC, IPAB, and Supreme Court challenges — became the global icon for Indian anti-evergreening jurisprudence.
B. Roche Tarceva — Pre-Grant Refused; Post-Grant Validated
Roche's patent application for the polymorph B form of erlotinib hydrochloride (the specific Tarceva form) was refused pre-grant on Section 3(d) grounds. However, the underlying compound patent (IN 774) was granted and survived post-grant Section 25(2) opposition. The pre-grant rejection of the polymorph patent did not affect the broader compound patent — illustrating the precision of Section 25 mechanisms.
C. CSIR-NCL Generic Pre-Grant Oppositions
Public-sector R&D institutions (CSIR, NCL) have actively used Section 25(1) pre-grant opposition to challenge multinational pharmaceutical patents — typically for HIV/AIDS, cancer, and cardiovascular drugs. This open public participation is a distinctive feature of the Indian patent challenge landscape.
9. Practical Considerations
✅ For challengers — twelve points Identify the strongest substantive ground — typically Section 3(d) for pharma, lack of inventive step for chemical compounds. Prepare comprehensive prior art search — patent databases, scientific literature, traditional knowledge sources. For pre-grant opposition (any person), document standing through public health, research, or commercial interest. For post-grant opposition (person interested), establish commercial or research interest formally. For Section 64 revocation, prepare for full High Court litigation — expert witnesses, technical evidence. Calendar deadlines carefully — 12-month window for Section 25(2) post-grant. Consider Section 107(1) revocation defence in infringement proceedings — single-forum strategy. For Section 25(1)(j) and 25(1)(k) traditional knowledge grounds, use TKDL evidence. For Section 8 challenges, scrutinise foreign filings disclosure compliance. For Section 25(1)(g) clarity challenges, identify ambiguity or insufficient enabling disclosure. Coordinate with civil society / public health organisations where applicable. For multi-jurisdictional patents, consider parallel oppositions to support Indian challenges. |
✅ For patentees defending — eight points Robust prior art search BEFORE filing — anticipate challenges. Maintain full Section 8 disclosure of foreign filings. Address Section 3 issues directly in specification — efficacy data for Section 3(d); synergy for Section 3(e). For pharma applications, include comparative efficacy data as part of specification. Anticipate pre-grant oppositions; file detailed responses to Examiner queries. For post-grant opposition responses, prepare expert evidence on novelty and inventive step. For Section 64 revocation challenges, coordinate with infringement defence under Section 107(1). Consider Section 57/58 amendment of specification to address potential challenges. |
🎯 EXAM POINTERS — TOPIC 57
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