Danieli A C Officine Maccaniche SpA v Controller of Patents & Designs (1999)

Summary

“This matter has been assigned to this Bench at the instance of the learned single Judge on the ground that the issues involved in the matter are very Important and require more authoritative pronouncement on the subject.” (para 1) The questions were “(a) whether the appeal was maintainable under section 116 of the Patents Act, 1970 (referred to as the Act); and (b) whether the order of the Controller dismissing appellant’s application under section 135 of the Act was in confirmity with the letter and spirit of section 133 of the Act or not.” (para 2) “Italy was declared a convention country as far as India was concerned on 3rd January, 1995. On 15th March 1995 an application was filed by the applicant under sections 133, 135 of the Act in which the applicant claimed priority on the basis of the application filed In Italy as a convention country.” “By a reasoned order dated 6th July, 1998 the Controller held, that the applicant was not entitled to claim priority” ... “because when the application was filed in Italy, Italy was not a convention country.” (para 3)

The Bench held that “The order is clearly covered by section 15(1) as quoted above and, therefore, is appealable under section 116(2) of the Act.” (para 5) On the second question it held that “the basic application must be made to a country which is a convention country when the basic application is made in order to qualify the applicant for a priority claim under section 135” (para 16), that the earlier applications from the six Commonwealth countries “were saved by the provisions of section 162 of the 1970 Act” (para 18), and that “The appellant’s rights on the other hand flowed for the first time under the 1970 Act.” (para 22) “The appellant’s basic application was made in 1994 when Italy was not a convention country.” “The appeal is accordingly dismissed without any order as to costs.” (para 24)

What the court decided

1. Procedure. Maintainability of the appeal. “The Controller has, if fact, refused to proceed with the application and has required the applicant to amend his application in the manner directed by the Controller before the Controller would proceed with the application at all. The order is clearly covered by section 15(1) as quoted above and, therefore, is appealable under section 116(2) of the Act.” (para 5) “The provisions of sections 133 and 135 were, relied upon by the Controller for refusing to proceed with the application of the applicant under section 15(1). It is not, as such, an order under sections 133 and 135 of the Act as contended by the appellant. We, accordingly, decide the first question in the affirmative and In favour of the appellant.” (paras 5–6)
2. The object of Chapter XXII. “These sections provide for reciprocity between India and the citizen of other countries. The object of the sections is not only to provide for the mutual protection of inventions (vide section 135), but also to deny the rights under the Act to the nationals of those countries who do not award reciprocity to Indians (vide section 134).” (para 7)
3. The conditions of a convention application. “The section therefore gives the applicant in India the benefit of priority by dating the claim of the applicant to the date when the applicant may have made an application In a convention country. In order to avail of this benefit:” “(1) The applicant should have made an earlier application for a patent in a convention country (known as the basic application):” “(2) An application for the patent in India has to be made under the Act:” “(3) The application in India must be made within 12 months from the date of the basic application.” (para 12)
4. Obiter. Why priority matters. “The importance of this priority is because the grant of the patent is always related to the date of the application.” “Thus, it would be no answer to a priority claim under section 135 to show that the invention was publicly known or publicly used before the date of application in India unless It could also be shown that such publicity was there even prior to the date of the application in the convention country.” (para 13)
5. Status of the basic country. “The appellant’s submission will depend on the crucial phrase In section 135 which requires the basic application to be an ‘application for a patent in respect of an invention in a convention country’. On a literal interpretation, the phrase pllantly means that the basic application must be made to a country which is a convention country when the basic application is made in order to qualify the applicant for a priority claim under section 135. In other words, an application made to a country which may subsequently be declared as a convention country will not do.” (para 16)
6. No retrospective declaration. “This is also clear from the provisions of sections 2(d) and 133 neither of which are expressed in language which can be construed as operating retrospective.” (para 17)
7. Applications pending under the 1911 Act. “The reason put forward by the respondents for this apparent aberration which we accept as correct is that these applications were saved by the provisions of section 162 of the 1970 Act.” (para 18) “Therefore the pending applications valldly made under section 78A of the 1911 Act would fall within the umbrella of section 162(3). The provisions of the 1970 Act have expressly been made applicable to pending applications.” (para 19) “There has never been any hiatus In respect of reciprocity as far as the six countries which had been notified as convention countries under the 1911 Act.” (paras 18–20)
8. An accrued right saved on repeal. “This interpretation is fortified by section 162(4) which gives overriding effect to the provisions with respect to repeals of the General Clauses Act, 1897.” “The applicants in convention countries under the 1911 Act had acquired a right to priority in India on the basis of such application, a right which was unaffected by the repeal. This was not a procedural but a substantive right or privilege accrued under the 1911 Act which was not taken away by the 1970 Act.” (para 21)
9. The appellant’s rights. “The appellant’s rights on the other hand flowed for the first time under the 1970 Act. Its case must be considered in the light of the provisions of section 135 of the 1970 Act which, as already held, provide that the basic application must have been made to a country which was declared a convention country under section 133(1).” (para 22)
10. The notification of 3 January 1995. “The notification, was not given retrospective effect and the privileges of reciprocity were therefore extended to the 72 countries Including Italy for the first time in 1995. The appellant’s basic application was made in 1994 when Italy was not a convention country. There has therefore been no discrimination between the appellant and the applicants with pending applications under the 1911 Act and the Tribunal rightly held that the application of the appellant under section 135 could not be proceeded with.” (para 24)
11. Disposition. “The appeal is accordingly dismissed without any order as to costs.” (para 24)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 27 October 2026.