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CS Professional · Intellectual Property Rights - Law and Practice · Patent Documentation, Examination and Infringement

In a post-grant opposition against a patent for a packaging machine, Sunrise Ltd argues lack of inventive step and public use in India before the priority date. To prove prior public use, it relies on an internal, unpublished trial note and a secret trial run conducted privately at its own plant. How must the Controller treat this material under the Patents Act, 1970?

The Controller must disregard it. Under section 25(5), when deciding the post-grant grounds of public knowledge or public use and of obviousness, the Controller shall not take into account any personal document or secret trial or secret use, so Sunrise's private trial material cannot support either ground.

  1. ATake it into account, as secret trials are the best evidence of prior use
  2. BTake it into account only if the patentee does not object
  3. CTake it into account only for the inventive step ground and not for public use
  4. DNot take into account any personal document or secret trial or secret use when deciding grounds of public use or obviousnessCorrect

Explanation

Section 25(5) bars the Controller, when ruling on clause (d) (public knowledge or use) or clause (e) (obviousness) of sub-section (2), from considering any personal document or secret trial or secret use. The bar covers both grounds, so option 3 is wrong.

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