CHAPTER IV

OPPOSITION TO GRANT OF PATENT

34. Manner of application for extension of time under section 25(1) — (1) An application for extension of time for giving notice of opposition to the grant of patent under sub-section (1) of section 25 shall be made in ¹²[Form 4] and left at the appropriate office within four months from the date of advertisement of the acceptance of the complete specification stating the reasons for the grant of extension of time.

(2) The application for extension of time shall be filed in triplicate.

(3) One copy of the application for extension of time shall be sent by the Controller to the applicant for patent.

35. Filing of notice of opposition— The notice of opposition to be given under sub-section (1) of section 25 shall be made in ¹²[Form 7] and sent to the Controller in triplicate.

¹²[36. Written statement of opposition— The opponent shall send a written statement in duplicate setting out the nature of opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, in duplicate in support of his case along with notice of opposition or within sixty days from the date of the notice of opposition and shall deliver to the applicant a copy of the statement and the evidence.]

¹²[37. Time for filing reply statement— If the applicant desires to contest the opposition, he shall leave at the appropriate office a reply statement in duplicate setting out fully the grounds upon which the opposition is contested and evidence if any, in duplicate, in support of his case within a period of sixty days from the date of receipt of the copy of the written statement and opponent’s evidence by him under rule 36 and deliver to the opponent a copy thereof.]

²²38. Omitted. *****************************************

²²39. Omitted. ****************************************

¹²[40. Reply evidence by opponent—The opponent may, within thirty days from the date of delivery to him a copy of the applicant’s reply

statement and evidence under rule 37, leave at the appropriate office evidence in reply in duplicate strictly confined to matters in the applicant’s evidence and shall deliver to the applicant a copy of such evidence.]

41. Further evidence to be left with the leave of the Controller— No further evidence shall be delivered by either party except by leave or directions of the Controller.

³⁰[Provided that such leave or direction is prayed before the Controller has fixed the hearing under rule 44.]

42. Number of copies to be supplied of documents— (1) Copies of all documents other than Indian patents specification referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition and authenticated to the satisfaction of the Controller, shall---

Unless the Controller otherwise directs. The number of copies shall accompany the notice, statement or evidence as the case may be in which they are referred to.

(2) Where a specification or other document in a language other than English is referred to in the notice, statement or evidence, an attested translation thereof, in triplicate, in English shall be furnished ³⁰[along with such notice, statement or evidence, as the case may be].

43. Extension of time— The time allowed for filing the reply statement or evidence shall not ordinarily be extended except by a special order of the Controller given on a petition made by the person seeking extension of time and on payment of the fee specified therefor in the First Schedule.

44. Hearing— (1) On the completion of the presentation of evidence, if any, or at such other time as the Controller may think fit, he shall appoint a time for the hearing of the opposition and shall give the parties not less than ten days’ notice of such hearing.

(2) If either party to the proceeding desires to be heard, he shall inform the Controller by a notice ²⁶[xxx].

(3) The Controller may refuse to hear any party who has not given notice under sub-rule (2).

(4) If either party intends to refer at the hearing to any publication not already mentioned in the notice, statement or evidence, he shall give to the other party and to the Controller not less than five days’ notice of his intention, together with details of such publication to which he intends to refer.

(5) After haring the party or parties desirous of being heard, or if neither party desirous to be heard, then without a hearing, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.

45. Determination of costs— If the applicant notifies the Controller that he does not desire to proceed with the application after notice of opposition is given, the Controller in deciding whether cost should be awarded to the opponent, shall consider whether opposition might have been avoided if the opponent had given reasonable notice to the applicant before the notice of opposition was given to the Controller.

46. Time within which complete specification is to be amended under section 27— The time within which an applicant shall amend his complete specification to the satisfaction of the Controller under section 27 shall be two months from the date of such intimation by the Controller.

47. Procedure to be followed-- (1) If the specification has not been amended to the satisfaction of the Controller within the time allowed under rule 46, including any extension thereof which the Controller may allow, a time for hearing shall be appointed and the applicant shall be given at least ten days’ notice of such date of hearing.

(2) The applicant shall as soon as possible, notify the Controller whether he will attend the hearing.

(3) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may prescribe or permit such amendment of the specification as will be to his satisfaction to be made and may refuse to grant a patent unless the amendment is made or agreed to within two months from the date of his order.

48. Extension of time— A request for extension of time specified in rule 46 or in sub-rule (3) of rule 47 shall be made in ¹²[Form 4] and the total extension of time given under either of the said rules shall not exceed two months.

49. Manner of request under section 28(2)— A request under sub-section (2) of section 28 shall be made in ¹²[Form 8].

50. Manner of making a claim under section 28(3)— (1) A claim under sub-section(3) of section 28 shall be made in ¹²[Form 8], and shall be accompanied by a statement setting out the circumstances under which the claim is made.

(2) A copy of the claim made and of the statement shall be sent by the Controller to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested and the claimant shall supply sufficient number of copies for the purpose.

51. Form of application to be made under sub-section (7) of section 28--

(1) An application under sub-section (7) of section 28 for a certificate shall be made in ¹²[Form 8] and shall be accompanied by a statement setting out the circumstances under which the application is made.

(2) A copy of the application and of the statement shall be sent by the Controller to each patentee or the applicant for patent, as the case may be (not being the applicant), to the person mentioned as the actual deviser, and to any other person whom the Controller may consider to be interested and the applicant shall supply sufficient number of copies for the purpose.

52. Procedure for the hearing of claim or an application under Section 28— The procedure specified in rules 35 to 45 relating to the filing of notice of opposition, written statement, reply statement, leaving evidence and hearing shall, so far as may be, apply to the hearing of a claim or an application under Section 28 as they apply to the proceedings in opposition to the grant of patents subject to the modification that reference to applicants shall be construed as the person making the claim or an application as the case may be.

53. Mention of inventor— Any mention of the inventor under sub-section (1) of section 28 shall be made in the patent after the name of the Controller and on the complete specification at the head of ¹²[Form 2] and may be in the following form, namely, :-

"The inventor of this invention/substantial part of this invention within the meaning of section 28 of the Patents Act, 1970, is …….of …….."

37. The Fourth Schedule substituted by S.O. 411(E), dated 02-06-1999, w.e.f. 02-06-1999.