Section 1. Section 76

21. Section 76— (a) in sub-section (1), omit "other"; (b) in sub-section (2), in clause (c), omit "opponent". 1. 1-4-1978, vide notification No. S.O. 799, dated 10-3-1978, in respect of the provisions of sub-section (2) of s. 12 and sub-section (2) of s. 13, s. 28, s. 68, and ss. 125 to 132 see Gazette of India, Part II, sec. 3 (ii). 20-4-1972 vide notification No. S.O. 300 dated 20-4-1972, in respect of the provisions [except sub-section (2) of s. 12 and sub-section (2) of s. 13, s. 28, s. 68 and ss. 125 to 132] see Gazette of India, Part II, sec. 3 (ii). 2. Subs. by Act 38 of 2002, s. 3, for Cl. (a) (w.e.f. 20-5-2003). 3. Clause (a) omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021). 4. Ins. by Act 15 of 2005, s. 2 (w.e.f. 1-1-2005). 5. Subs. by Act 38 of 2002, s. 3, for clause (d) (w.e.f. 20-5-2003). 6. Subs. by Act 15 of 2005, s. 2, for "notified as such under sub-section (1) of section 133" (w.e.f. 1-1-2005). 7. Clause (g) omitted by s. 2, ibid. (w.e.f. 1-1-2005). (h) "Government undertaking" means any industrial undertaking carried on— (i) by a department of the Government, or (ii) by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or (iii) by a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956),[1] [or] 1[(iv) by an institution wholly or substantially financed by the Government;] 2* * * * * CHAPTER V 2[OPPOSITION PROCEEDINGS TO GRANT OF PATENTS] 3 [25. Opposition to the patent . — (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: 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; 3[(i) "High Court", in relation to a State or Union territory, means the High Court having territorial jurisdiction in that State or Union territory, as the case may be;] 4[(ia) "international application" means an application for patent made in accordance with the Patent Cooperation Treaty;] 5[(j) "invention" means a new product or process involving an inventive step and capable of industrial application; 6[(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;]] (k) "legal representative" means a person who in law represents the estate of a deceased person; 7[(l) "new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e ., the subject matter has not fallen in public domain or that it does not form part of the state of the art; (la) "Opposition Board" means an Opposition Board constituted under sub-section (3) of section 25; (m) "patent" means a patent for any invention granted under this Act;] (n) "patent agent" means a person for the time being registered under this Act as a patent agent; 1. The Explanation ins. by Act 15 of 2005, s. 52 (w.e.f. 1-1-2005). (iii) other persons against whom the patentee is not taking or has not taken proceedings for infringement. (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; (o) "patented article" and "patented process" mean respectively an article or process in respect of which a patent is in force; 4 [(oa) "Patent Cooperation Treaty" means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time;] (p) "patentee" means the person for the time being entered on the register as the grantee or proprietor of the patent; (q) "patent of addition" means a patent granted in accordance with section 54; (r) "patent office" means the patent office referred to in section 74; (s) "person" includes the Government; 1. Ins. by Act 15 of 2005, s. 2 (w.e.f. 1-1-2005). (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; 1. Chapter IVA omitted by Act 15 of 2005, s. 21 (w.e.f. 1-1-2005). 2. Subs. by s. 22, ibid ., for Chapter Heading (w.e.f. 1-1-2005). 3. Subs. by s. 23, ibid ., for sections 25 and 26 (w.e.f. 1-1-2005). (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 is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed. (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) that the patentee 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 claim of the patentee 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 claim of the patentee; (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 granted 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 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 patentee 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 patent granted on convention application, the application for patent was not made within twelve months from the date of the first application for protection for the invention made in a convention country or in India by the patentee or a person from whom he derives title; (j) that the complete specification does not disclose or wrongly mentions the source and 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, but on no other ground. (3) (a) Where any such notice of opposition is duly given under sub-section (2), the Controller shall notify the patentee. (b) On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller. (c) Every Opposition Board constituted under clause (b) shall conduct the examination in accordance with such procedure as may be prescribed. (4) On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent. (5) While passing an order under sub-section (4) in respect of the ground mentioned in clause (d) or clause (e) of sub-section (2), the Controller shall not take into account any personal document or secret trial or secret use. (6) In case the Controller issues an order under sub-section (4) that the patent shall be maintained subject to amendment of the specification or any other document, the patent shall stand amended accordingly.