Rule 97 of the Patents Rules, 2003
When a prima facie case is not made out
Requires the Controller to notify an applicant when no prima facie case is made out and to hear the applicant before refusing.
Official legal text
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Nothing here replaces the statute. The official wording of the provision, together with any Gazette notification that applies to it, governs. This page only explains that material in ordinary language.
What this rule requires, step by step
Compulsory licence and non-working proceedings are heavy. They involve the patentee, evidence, hearings and often appeals, so the law does not let every application proceed to a full contest. Rule 97 creates a screening stage. The Controller first considers whether the application discloses a prima facie case, meaning whether the facts asserted, taken at face value, could justify the order sought.
If the Controller is not satisfied that such a case is made out, the applicant is notified. The application is not thrown out on the spot. The applicant may ask to be heard within the short period the Rules allow from that notification, and if the request is made the hearing must be given before any refusal. Only if the applicant does not ask within that period may the Controller refuse the application without more.
This is a genuine second chance, and applicants who use it well often succeed at this stage. The hearing is the opportunity to explain evidence that was compressed in the original application, to clarify the applicant's interest and capacity, or to correct a misreading of the material. What it is not is a chance to build a different case from scratch, so the strongest position is still a well-prepared application in the first place.
If a prima facie case is made out, the matter moves into the public phase under section 87: the applicant serves copies on the patentee and any other person appearing from the register to have an interest, and the application is published in the Official Journal, which opens the door to opposition under section 87(2). The screening stage therefore decides whether a patentee ever has to engage at all.
Why this rule matters
Applicants for compulsory licences or revocation for non-working, and patentees who benefit from weak applications being filtered out.
Immediately after the application is filed, before any notice reaches the patentee.
A right to be notified and to be heard before refusal at the screening stage, and a power in the Controller to refuse applications that disclose no prima facie case.
An applicant who lets the short hearing window pass will simply have the application refused, and the work invested in it is lost.
How it works in practice
A weak application rescued at the hearing
A Ludhiana firm applies for a compulsory licence over a patented industrial coating, saying only that the product is expensive and hard to obtain. The Controller is not satisfied that a prima facie case is made out and issues an intimation to that effect. The firm's counsel requests a hearing within the short period the Rules allow. At the hearing she does two things. She explains the applicant's interest properly, producing supply contracts and plant capacity records that were mentioned only in passing in the application. She then puts on record the correspondence in which the firm sought a voluntary licence and the patentee's reply refusing to supply outside its own distributor network, together with a price comparison across three markets. The Controller, seeing that the assertions now rest on identifiable material, is satisfied that a prima facie case exists and directs the applicant to serve the patentee and publish the application. Had the firm ignored the intimation, the application would simply have been refused.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- The Controller screens compulsory licence and non-working applications for a prima facie case before the patentee is involved.
- If no prima facie case is seen, the applicant is notified rather than refused immediately.
- The applicant must request a hearing within the short period fixed by the Rules to avoid refusal.
- The hearing is to explain and support the case already made, not to start a new one.
- If a prima facie case is found, the application is served and published under section 87.
Common mistakes and misunderstandings
- Reading the intimation as a final refusal and doing nothing. It is an invitation to ask for a hearing.
- Requesting a hearing after the period has passed, when the Controller may already have refused the application.
- Relying on assertions of high price or short supply without documents. The prima facie test still needs material behind it.
Connected provisions
The link between a rule and its section matters in practice, because an argument about whether a procedure is valid usually starts with the parent provision. The connected sections are listed here, apart from the explanation, so the chain of authority is easy to follow.
Forms, deadlines and fees
- A request to be heard must be made within the short period fixed by the Rules from the date of the Controller's intimation, currently one month. Confirm the exact period against the Rules in force.
Open the deadline calculator — and have every date confirmed against the current Rules before you rely on it.
We do not publish fee amounts. The First Schedule sets them, and they differ by category of applicant, such as a natural person, a startup, a small entity or another applicant, and by the mode of filing. Check the Schedule currently in force before you calculate anything. How Indian patent fees work.
Related judgments
This part of the page is reserved for summaries of decided cases. They are added one at a time, after review by a person qualified to confirm that the summary matches the judgment. Nothing has been cleared for this provision so far, so there is nothing to show. How case notes are prepared.
Questions people ask about Rule 97
What does prima facie case mean here?
It means that the material placed before the Controller, if accepted as true and untested, could support the order sought. The Controller is not deciding whether the applicant will win. The question is whether the application discloses a real case worth putting the patentee to the trouble of answering. Applications that assert conclusions, such as saying a price is unaffordable, without material such as price comparisons, demand data or licence correspondence, are the ones that fail this test.
What should I do if I receive an intimation that no prima facie case is made out?
Act quickly. Request a hearing within the short period the Rules allow, because failing to do so lets the Controller refuse the application. Then prepare for the hearing by identifying exactly which element the Controller doubted, whether it is your interest, the statutory ground, or the efforts made to obtain a voluntary licence, and put the supporting documents in order. It is far better to address the specific gap than to repeat the original submissions.
What happens after the Controller accepts that a prima facie case exists?
The matter moves into the open phase under section 87. The applicant serves copies of the application on the patentee and on any other person who appears from the register to be interested in the patent, and the application is published in the Official Journal. That publication starts the period within which the patentee or any other interested person may give notice of opposition under section 87(2), after which evidence is filed and both sides are heard before the Controller decides.
Told your compulsory licence case is not made out?
MYCrave Consultancy prepares hearing submissions and evidence to get compulsory licence applications past the prima facie stage.
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