Pre-Grant and Post-Grant Opposition of Patent Applications

Pre-Grant and Post-Grant Opposition of Patent Applications. This article represents a clear explanation of Pre-Grant and Post-Grant stages of patent applications in India (similar frameworks exist worldwide under the Patents Act, 1970):
Pre-Grant Stage of Patent Applications
This stage begins from the date of filing of the patent application and continues until the patent is formally granted.
Key points include:

Publication of Application (Section 11A): After filing the applications are usually published 18 months from the priority date. The applicant can also request early publication.

Pre-Grant Opposition (Section 25(1)): Any person (not just an interested party) can file an opposition after publication before grant. The grounds include wrongful obtaining, prior publication, lack of novelty, obviousness, non-patentable subject matter (Sections 3 & 4), insufficiency of disclosure, etc. and this ensures that frivolous or undeserving patents don’t get granted.

Examination (Section 12–14): The applicant must request examination (RFE) within 31 months. Upon filing the request examination (RFE), the Controller refers to an examiner who checks novelty, inventive step, and industrial applicability of the invention filed by the applicant. After examination by the Examiner, the Controller issues an Office Action (FER – First Examination Report) with the objection(s) raised.

Finally, if all requirements are satisfied and opposition (if any) is cleared, the patent proceeds to grant. 
Post-Grant Stage of Patent Applications
Once the Controller grants and publishes the patent (Section 43), the application enters the post-grant phase and the important aspects are:

Post-Grant Opposition (Section 25(2)): Post-Grant opposition can be filed within 12 months from the date of grant. Only an “interested person” i.e. a competitor can file post-grant opposition, and the grounds of opposition are like pre-grant. The proceedings are heard by the Opposition Board.

Patent Rights (Section 48): As you are aware, Patente gets exclusive rights to prevent others from making, using, selling, or importing the invention, and the Rights are enforceable only after grant as described in the earlier articles.

Revocation of Patent (Section 64): Even after the opposition window, a patent may be revoked through High Court (now IP Division of High Courts) on similar grounds.

Maintenance of Patents after grant: This is important that after granting a patent, the applicant/patente is responsible for paying annual renewal fees to keep the patent in force (up to 20 years). Failure to pay may lead to lapse of the patent.

Key Differences
In view of the above explanations, you may go through and understand the below given table about the different procedures of Pre-Grant as well as Post-Grant opposition of patent applications:

Aspect

Pre-Grant

Post-Grant

Who can oppose?

Any person

Only “interested person”

When?

After publication, before grant

Within 12 months after grant

Authority

Controller of Patents

Opposition Board + Controller

Rights available to applicant?

Limited (can claim damages for infringement after publication, subject to grant)

Full exclusive rights under Section 48

Working Statement of Patents in India 
What is a Working Statement? 
Under Section 146 of the Patents Act, 1970 and Rule 131 of the Patents Rules, 2003, every patentee and licensee must inform the Controller of Patents whether their patented invention is being “worked” in India (i.e., commercially exploited) or not. This is done through Form 27, commonly called the Statement of Working. 
Purpose of submitting working statement: The purpose of filing working statement on Form 27 is to ensure patents are not kept idle and that they contribute to public benefit. It also helps determine compulsory licensing eligibility under Section 84. 
Procedure for Filing Form 27: Following are the steps for filing a Working Statement on Form 27:

The patentee (owner of the patent) and the licensee (exclusive or non-exclusive), if the licensee is registered can file the working statement on Form 27

Earlier the period of filing working statement on Form 27 was within 3 months on or before the end of every year (i.e., by March 31). After 2020 Amendment: Once in every financial year (April–March), within 6 months of its end (i.e., by September 30).

The applicant/patentee can file the working statement on Form 27 through online on Patent e-filing system with prescribed fee.

The details required in Form 27 (Post-amendment) are:
Whether the patent is worked or not worked in India.

If worked: Approximate revenue/value accrued from the patented invention in India.

If not worked:

Reason for not working.

Steps being taken to work the invention in the future.

Note: Earlier, patentees had to provide quantum of product manufactured/imported and details of licenses/sub-licenses, but this has been relaxed in the recent amendment. 
Recent Amendments to Working Statement 
Patent (Amendment) Rules, 2020 (effective from October 20, 2020)

Filing frequency reduced from every calendar year to every financial year and filing deadline within 6 months from the end of financial year.

Before amendment, the consolidated Statement allowed on Separate Form 27 for each patent.

Now after amendment, one Form 27 can cover multiple patents, provided they are related to the same product/technology.

Simplification of Disclosure

Before amendment, the patentee/applicant had to disclose quantum, details of licensees, sub-licenses, manufacturing, imports, etc.

Now after amendment, only worked/not worked, approximate value/revenue, and general reasons if not worked.

Confidentiality respected

Sensitive business data like pricing, number of units sold, or detailed licensing terms no longer need to be disclosed. 
Importance of Filing Working Statement

Non-compliance: Failure to file Form 27 can attract penalty under Section 122, with a fine up to Rs.1,00,000 for each default.

Ground for compulsory license: If a patent is not being “worked” in India, any person can apply for compulsory licensing after 3 years of grant.

Key differences described in table below:

Aspect

Before Amendment

After Amendment (2020 Rules)

Filing Period

Annually (by March 31)

Financial year basis (by Sept 30)

Data Required

Quantum of product, imports, license details

Only “worked/not worked” + approximate value

No. of Forms

One form per patent

One form can cover multiple patents

Burden on Patentee

High, detailed disclosure

Reduced, simpler reporting

Conclusion
Pre-grant and post-grant oppositions provide vital checks against undeserving patents, while the working statement regime ensures patents serve the public interest. Together, they form the backbone of India’s patent system under the Patents Act, 1970, balancing innovation, competition, and accessibility.

This article represents a clear explanation of Pre-Grant and Post-Grant stages of patent applications in India (similar frameworks exist worldwide under the Patents Act, 1970):

Pre-Grant Stage of Patent Applications

This stage begins from the date of filing of the patent application and continues until the patent is formally granted.

Key points include:

Publication of Application (Section 11A): After filing the applications are usually published 18 months from the priority date. The applicant can also request early publication.
Pre-Grant Opposition (Section 25(1)): Any person (not just an interested party) can file an opposition after publication before grant. The grounds include wrongful obtaining, prior publication, lack of novelty, obviousness, non-patentable subject matter (Sections 3 & 4), insufficiency of disclosure, etc. and this ensures that frivolous or undeserving patents don’t get granted.
Examination (Section 12–14): The applicant must request examination (RFE) within 31 months. Upon filing the request examination (RFE), the Controller refers to an examiner who checks novelty, inventive step, and industrial applicability of the invention filed by the applicant. After examination by the Examiner, the Controller issues an Office Action (FER – First Examination Report) with the objection(s) raised.

Finally, if all requirements are satisfied and opposition (if any) is cleared, the patent proceeds to grant.

Post-Grant Stage of Patent Applications

Once the Controller grants and publishes the patent (Section 43), the application enters the post-grant phase and the important aspects are:

Post-Grant Opposition (Section 25(2)): Post-Grant opposition can be filed within 12 months from the date of grant. Only an “interested person” i.e. a competitor can file post-grant opposition, and the grounds of opposition are like pre-grant. The proceedings are heard by the Opposition Board.
Patent Rights (Section 48): As you are aware, Patente gets exclusive rights to prevent others from making, using, selling, or importing the invention, and the Rights are enforceable only after grant as described in the earlier articles.
Revocation of Patent (Section 64): Even after the opposition window, a patent may be revoked through High Court (now IP Division of High Courts) on similar grounds.
Maintenance of Patents after grant: This is important that after granting a patent, the applicant/patente is responsible for paying annual renewal fees to keep the patent in force (up to 20 years). Failure to pay may lead to lapse of the patent.

Key Differences

In view of the above explanations, you may go through and understand the below given table about the different procedures of Pre-Grant as well as Post-Grant opposition of patent applications:

Aspect	Pre-Grant	Post-Grant
Who can oppose?	Any person	Only “interested person”
When?	After publication, before grant	Within 12 months after grant
Authority	Controller of Patents	Opposition Board + Controller
Rights available to applicant?	Limited (can claim damages for infringement after publication, subject to grant)	Full exclusive rights under Section 48

Working Statement of Patents in India

What is a Working Statement?

Under Section 146 of the Patents Act, 1970 and Rule 131 of the Patents Rules, 2003, every patentee and licensee must inform the Controller of Patents whether their patented invention is being “worked” in India (i.e., commercially exploited) or not. This is done through Form 27, commonly called the Statement of Working.

Purpose of submitting working statement: The purpose of filing working statement on Form 27 is to ensure patents are not kept idle and that they contribute to public benefit. It also helps determine compulsory licensing eligibility under Section 84.

Procedure for Filing Form 27: Following are the steps for filing a Working Statement on Form 27:

The patentee (owner of the patent) and the licensee (exclusive or non-exclusive), if the licensee is registered can file the working statement on Form 27
Earlier the period of filing working statement on Form 27 was within 3 months on or before the end of every year (i.e., by March 31). After 2020 Amendment: Once in every financial year (April–March), within 6 months of its end (i.e., by September 30).
The applicant/patentee can file the working statement on Form 27 through online on Patent e-filing system with prescribed fee.

The details required in Form 27 (Post-amendment) are:

Whether the patent is worked or not worked in India.

If worked: Approximate revenue/value accrued from the patented invention in India.
If not worked:
- Reason for not working.
- Steps being taken to work the invention in the future.

Note: Earlier, patentees had to provide quantum of product manufactured/imported and details of licenses/sub-licenses, but this has been relaxed in the recent amendment.

Recent Amendments to Working Statement

Patent (Amendment) Rules, 2020 (effective from October 20, 2020)

Filing frequency reduced from every calendar year to every financial year and filing deadline within 6 months from the end of financial year.
- Before amendment, the consolidated Statement allowed on Separate Form 27 for each patent.
- Now after amendment, one Form 27 can cover multiple patents, provided they are related to the same product/technology.
Simplification of Disclosure
- Before amendment, the patentee/applicant had to disclose quantum, details of licensees, sub-licenses, manufacturing, imports, etc.
- Now after amendment, only worked/not worked, approximate value/revenue, and general reasons if not worked.
Confidentiality respected

Sensitive business data like pricing, number of units sold, or detailed licensing terms no longer need to be disclosed.

Importance of Filing Working Statement

Non-compliance: Failure to file Form 27 can attract penalty under Section 122, with a fine up to Rs.1,00,000 for each default.
Ground for compulsory license: If a patent is not being “worked” in India, any person can apply for compulsory licensing after 3 years of grant.

Key differences described in table below:

Aspect	Before Amendment	After Amendment (2020 Rules)
Filing Period	Annually (by March 31)	Financial year basis (by Sept 30)
Data Required	Quantum of product, imports, license details	Only “worked/not worked” + approximate value
No. of Forms	One form per patent	One form can cover multiple patents
Burden on Patentee	High, detailed disclosure	Reduced, simpler reporting

Conclusion

Pre-grant and post-grant oppositions provide vital checks against undeserving patents, while the working statement regime ensures patents serve the public interest. Together, they form the backbone of India’s patent system under the Patents Act, 1970, balancing innovation, competition, and accessibility.