India provides that any person can represent by way of opposition to the Controller of Patents against the grant of a patent for any invention based on grounds as specified in section 25(1) of India’s Patents Act, 1970. If the representation is found to be valid, it may assist India’s patent office in its decision with regards to the patentability of an invention before a patent is granted, resulting in the grant of valid patents.
Earlier, in the international phase of an application under the Patent Cooperation Treaty (PCT), the only people involved were the applicant and the offices conducting various aspects of processing (receiving office, international bureau and international searching and preliminary examining authorities). Third parties got some information during the international phase but had had no opportunity to comment unless the application entered the national phase and as allowed by national laws.
The World Intellectual Property Organization (WIPO) later introduced the Third Party Observation Service, whereby third parties can make certain observations on an international application during the international phase if they believe that the claimed invention is either not new (lacks novelty) or is obvious (lacks inventive step).
Comparing the systems
Regarding pre-grant opposition in India and the PCT’s Third Party Observation Service, the following can be said:
Third party observations can be submitted from the international publication date until 28 months from the priority date, whereas pre-grant opposition can be submitted any time after the publication of the application, but before the grant of patent.
In third party observations, a person may only make a single observation on any particular international application. There is no such restriction on representations for pre-grant opposition.
A maximum of 10 third party observations may be submitted on any particular international application. Pre-grant opposition can be submitted with no restriction on the number of grounds or documents for prior art references.
Both third party observations and pre-grant opposition may be submitted by any person and not necessarily by an interested person, but both are restricted to specific grounds. Third party observations are limited to comments on novelty and inventive step, while pre-grant opposition is limited to the grounds specified in section 25(1) of the Patents Act, which include novelty and inventive step.
Third party observation submissions must be made online after setting up a WIPO user account, whereas pre-grant opposition can be submitted either online by the e-filing route or by submitting hard copies to an Indian patent office. In all of these cases, there is no filing fee involved.
In third party observations, the national patent office is free to ignore the observations even if published by WIPO. In pre-grant opposition, the examiner cannot ignore the opposition representation and has to evaluate the validity of the patent to be granted following the statutory procedure.
An applicant in the international phase is not required to file a response to third party observations but can do so within 30 months from the priority date. In pre-grant opposition, a response by the patent applicant is mandatory and must be submitted within three months of receiving an opposition notice.
A person who makes third party observations has no right to interfere or participate in further proceedings of the application, once the observations are made. In pre-grant opposition, a person who files an opposition, if allowed by the Controller, has a right to be heard and to participate in the procedural formalities for the pre-grant opposition before the Controller.
Previously, there was no mechanism to comment on a PCT international application unless it entered the national phase in different countries. The Third Party Observation Service now provides an opportunity to make observations on PCT applications during the international phase, claiming that the invention lacks novelty or inventive step.
The PCT third party observations system can be said to bear similarities with pre-grant opposition in India. The system of third party observations introduced by WIPO can be helpful for national offices in getting prior art references. Such observations by third parties might assist the International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA) with the prior art documents. A key benefit of third party submissions is that they are applicable worldwide – all nations can refer to the observations made on any international application.
Like ISA & IPEA search reports, third party observations equally are not binding on national offices’ examination procedures, and may only be considered as references. Unlike pre-grant opposition in India, national patent office examiners who ultimately decide on the patentability of inventions are not bound by third party observations made on any international application and are free to ignore them completely.
Manoj K Singh is the founding partner of Singh & Associates, a full-service international law firm with headquarters in New Delhi.
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