Rules 28 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Rule 28 describes what happens when the Controller finds, after the search under section 13, that a claim of a complete specification has already been published elsewhere. The applicant is told the gist of the objections, may amend, may ask to be heard, and may be heard in person or by video. Rule 28A applies the same procedure when the applicant contests objections raised on the examiner's report under section 14.
The Controller communicates the gist of specific objections and the basis thereof and the applicant gets an opportunity to amend (rule 28(1)). An applicant who contests the objections, or refiles the specification with observations, is heard if he requests (rule 28(2)); a request made within one month of the communication obliges the Controller to fix a date (rule 28(3)). The applicant gets ten days' notice, hearings may be by video-conferencing, and written submissions are due within fifteen days from the date of hearing (rule 28(4), (6), (7)).
Where rule 28 fits
Under section 13 of the Act, the Controller investigates whether the invention claimed has been anticipated by an earlier publication or claimed in an earlier-filed specification. Rule 28 deals with the first of these: anticipation by prior publication, meaning publication in a specification or other document referred to in clause (a) of sub-section (1) or in sub-section (2) of section 13. Anticipation by prior claiming is covered by rule 29, in our article on rules 29 to 33. For the Act, see our articles on section 13 (search for anticipation) and section 15 (power to refuse or require amendment).
Sub-rule (1): the gist of objections
If the Controller is satisfied, after investigation under section 13, that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document referred to in section 13, the Controller shall communicate the gist of specific objections and the basis thereof to the applicant, and the applicant shall be afforded an opportunity to amend the specification.
Two points follow. The objection is claim-specific: it is made against "any claim", so one anticipated claim is enough to trigger the rule. And the Controller must give the gist and the basis, so the applicant knows which document is relied on and why.
If you receive such an objection, our patent hearing support service can prepare the amendment and the hearing submissions.
Sub-rule (2): contesting and asking for a hearing
If the applicant contests any of the objections, or refiles the specification with observations on whether or not it should be amended, the applicant shall be given an opportunity to be heard if he so requests.
- First proviso: the request shall be made on a date earlier than ten days of the final date of the period referred to in section 21(1). (The printed text says "period preferred to", a slip for "referred to".)
- Second proviso: a request for hearing may be allowed within a shorter period as the Controller deems fit in the circumstances.
The section 21(1) period is the time for putting an application in order for grant; rule 24B(5) and (6) give its length. See our article on rule 24B. So a hearing request must be made at least ten days before that period ends, unless the Controller allows a shorter period.
Sub-rule (3): fixing the date
If the applicant requests a hearing within one month from the date of communication of the gist of objections, or the Controller considers it desirable to do so, whether or not the applicant has refiled the application, the Controller shall forthwith fix a date and time for hearing, having regard to the period remaining for putting the application in order or to other circumstances.
Sub-rule (4): notice
The applicant shall be given ten days' notice of the hearing, or such shorter notice as appears to the Controller to be reasonable in the circumstances, and shall, as soon as possible, tell the Controller whether he will attend.
Sub-rule (5): decision
After hearing the applicant, or without a hearing if the applicant has not attended or has said he does not want to be heard, the Controller may specify or permit such amendment of the specification as he thinks fit and may refuse to grant the patent unless the amendment so specified or permitted is made within the period fixed.
Sub-rule (6): video hearings
The hearing may also be held through video-conferencing or audio-visual communication devices. The proviso says such hearing is deemed to have taken place at the appropriate office. The Explanation gives "communication device" the meaning in clause (ha) of section 2(1) of the Information Technology Act, 2000. Our article on rules 3 and 4 explains the appropriate office.
Sub-rule (7): written submissions
In all cases of hearing, written submissions and relevant documents, if any, shall be filed within fifteen days from the date of hearing.
| Step | Rule | Period or content |
|---|---|---|
| Objection communicated | 28(1) | Gist of specific objections and basis; chance to amend |
| Request for hearing | 28(2), (3) | Not later than ten days before the section 21(1) period ends; request within one month obliges the Controller to fix a date |
| Notice of hearing | 28(4) | Ten days, or shorter notice that is reasonable |
| Mode | 28(6) | In person or by video or audio-visual device; deemed held at the appropriate office |
| Written submissions | 28(7) | Within fifteen days from the date of hearing |
| Outcome | 28(5) | Amendment specified or permitted; patent may be refused unless made within the period fixed |
Rule 28A: consideration of the examiner's report under section 14
Rule 28A is one sentence: "In case the applicant contests any of the objections communicated to him, the procedure specified under rule 28 may apply." Section 14 deals with the Controller's consideration of the examiner's report; see our article on section 14 of the Patents Act, 1970. Rule 28A therefore brings the hearing procedure of rule 28 into play where an applicant contests objections raised on the examiner's report, not only objections on anticipation. The word "may" leaves some room; the rule does not say what controls its use.
A worked example
Prism Coatings receives a first statement of objections and a communication from the Controller that claim 3 of its complete specification has been published in an earlier document. The gist and the basis are stated. Prism contests the objection and requests a hearing within one month of the communication, and also before ten days remain of its six-month period under section 21. The Controller fixes a date forthwith and gives ten days' notice. Prism's attorney attends by video-conferencing; the hearing is deemed held at the appropriate office. Within fifteen days of the hearing, Prism files written submissions and any documents. The Controller may then permit an amendment of claim 3 and may refuse the patent unless it is made within the period fixed.
Practical points
- Diarise both the one-month and the ten-days-before-section-21 dates from the date the gist is communicated.
- Tell the Controller promptly whether you will attend.
- File written submissions within fifteen days of the hearing, whatever the mode.
- Prepare a proposed amendment, since rule 28(1) gives the applicant the opportunity to amend.
Need help with the hearing?
A hearing is the applicant's main chance to explain why a claim is not anticipated or to agree an amendment. If you would like the reply, amendments and the hearing prepared, you can talk to us about patent hearing support. Our general overview of the patent examination process shows where the hearing sits.
Key takeaways
- The Controller must communicate the gist and basis of specific objections of prior publication, and let the applicant amend.
- A contesting applicant is heard on request; the request is made not later than ten days before the section 21(1) period ends unless a shorter period is allowed.
- A request within one month of the communication obliges the Controller to fix a date.
- Ten days' notice, or shorter reasonable notice; hearings can be by video.
- Written submissions are due within fifteen days from the hearing.
- Rule 28A applies rule 28 where objections on the examiner's report are contested.
- Check amendments after the Second Amendment Rules, 2024.
Read next
- Rules 29 to 33: anticipation by prior claiming and potential infringement
- Rule 24B: request for examination and first statement of objections
- Response to first examination report (FER): how to draft
- Section 13 of the Patents Act, 1970
Disclaimer: Based on the Patents Rules, 2003 as consolidated up to 21 September 2021 and as amended by the Patents (Amendment) Rules, 2024 and the Patents (Second Amendment) Rules, 2024, as consulted on 2 October 2026. Later amendment rules, forms and fees should be checked in their current form. This article is general information, not legal advice; check the official text before acting.