Gunjan Sinha @ Kanishk Sinha v Union of India (2025)

Summary

“This intra Court appeal has been filed against the judgement and order dated May 7, 2024 passed in WPA No 8691 of 2023 dismissing the writ petition and upholding the validity of Section 53 of the Patent Act 1970 as intra vires the Constitution.” (para 1) The patent “was granted on 28.12.2012 valid for 20 years with effect from the date of application” (para 2). The appellants’ “bone of contention” was “that on one hand under section 53 of the said Act” the grant “is effected from the date of application and on the other hand section 11(A) (7) says that on and from the date of publication of the application for Patent and until the date of grant of a Patent in respect of such application, the applicant shall have the right and privileges as if the a Patent for the invention is granted on the date of publication provided the applicant shall not be entitled to institute any proceeding for infringement until Patent has been granted” (para 7), and that “the Rule 80 (i.e.) Renewal Fees payable at the expiration of Second Year from the date of Patent or any succeeding year is contrary to Section 53 of the Act” (para 8).

The Bench held that “by no stretch of imagination it can be said that the scope and purport of Section 53 of the Patent Act 1970 is similar to that of Section 11-A (7)” (para 16), and that “both provisions namely Section 11A(7) and Section 53 operate in two different fields and the rights flowing from those provisions cannot be superimposed nor read together to give a different meaning than what is intended by the statute.” (para 24) It held that “To legislate or to recommend the Government to legislate in a particular manner or otherwise is not within the domain of a Court exercising jurisdiction under Article 226 of the Constitution of India” (para 23) and, on patent term adjustment, that “these are all issues which are best left to the legislative minds to ponder upon and it is not for the Court to suggest as to how the legislation is to be drafted” (para 26). Finding “no merit in the instant appeal to interfere with the judgement and order passed by the Learned Single Judge” (para 27), it held: “Hence the instant appeal stands dismissed.” (para 28)

What the court decided

1. Sections 11A(7) and 53 compared. “Therefore by no stretch of imagination it can be said that the scope and purport of Section 53 of the Patent Act 1970 is similar to that of Section 11- A (7) .Unless the right of an applicant is crystallised , Section 53 of the Patents Act will not come into play.” (para 16) “Section 53 falls in Chapter VIII of the Act which deals with ‘Grant Of Patents and Rights Conferred Thereby’. Therefore, both provisions namely Section 11A(7) and Section 53 operate in two different fields and the rights flowing from those provisions cannot be superimposed nor read together to give a different meaning than what is intended by the statute.” (paras 16, 24)
2. The object of section 11A(7). “Therefore it is clear that from the object and intent of the said provision is to provide some rights to an applicant whose application has been published.” (para 15) “As rightly observed by the Hon’ble Single Bench the rights conferred under Section 11A (7) provides for interim protection from the publication date to the grant date, safeguarding the applicant’s interest without prematurely granting full patent rights.” (paras 15, 24)
3. Infringement only after grant. “At this juncture, it is to be noted that the patent rights are statutory rights and no common law rights are available in patents. Hence, an action for infringement would be maintainable only if the patent is granted and the patent is live.” (para 23) “The mandate of the statute is that an action of infringement may be brought about only if a patent has been granted though damages can be sought with effect from the date of publication.” (paras 23–24)
4. Section 62(2) as a parallel. “Apart from Section 11A(7) making the position clear if we look into Section 62 of the Act which deals with right of patentees of lapsed patents which have been restored, Sub-section(2) states that no suit or other proceedings shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of publication of the application for restoration of patent” (para 23)
5. Term from the filing date. “It is pertinent to mention that prior to the Amendment Act 38 of 2002 the term of Patent granted in respect of any invention was 14 years from the date of Patent. After the amendment the term has been extended for a period of 20 years from the date of filing of the application of the Patent.” (para 16) The Single Judge had observed that “the amended section 53 is an improvement in as much as the term of patent has been increased substantially in tune with TRIPS Agreement” (para 22), and the Bench held that “the decision rendered by the Hon’ble Single Bench lays down the correct legal principle by rightly taking note of the legal framework.” (paras 16, 22, 24)
6. Grounds for a challenge to vires. “The applicant has principally challenged the vires of section 53 of the Patent Act and therefore a definite ground ought to have been given in order to establish that any such ground exits to challenge the Vires.” (para 16) “Be that as it may nothing has been placed to establish such situation where a provision framed by the legislature after following innumerable procedure as enshrined in the Constitution of India should have to be declared as Ultra Vires which otherwise means beyond one’s legal power or authority .” (paras 16, 20)
7. No direction to legislate. “To legislate or to recommend the Government to legislate in a particular manner or otherwise is not within the domain of a Court exercising jurisdiction under Article 226 of the Constitution of India.” (para 23) “In the event, the legislation is drafted and the same comes up for judicial scrutiny then the Court would consider the validity of such legislation and in all other cases the duty of the Court is to interpret the law and not to enact the law.” (paras 23, 26)
8. Patent term adjustment. “In USA, Patent Term Adjustment (PTA) has been introduced which compensates the patentee for delay in the approval process.” (para 25) The Bench recorded that “the committee which was constituted by the Court in Nittoo Denko Corporation has opined that the USA model regarding Patent Term Extension (PTA) for the time lost in processing of the application in the patent office is not conducive to India”, and held that “these are all issues which are best left to the legislative minds to ponder upon and it is not for the Court to suggest as to how the legislation is to be drafted.” (paras 25–26)
9. Authorities distinguished. Of Proctor and Gamble Company v Controller of Patents and Designs, the Bench recorded that “the patent was refused on the ground of lack of inventive step under section 2 (1) (ja) of the Act long after 4 years when the notice under section 8(2) was issued” (para 17); of Ferid Allani v Union of India (2019), that “the writ petition was filed challenging the order of refusal to grant patent as per the application of the applicant” (para 18); and it held: “The aforementioned judgements are not applicable in the instant case in view of the different facts and circumstances.” (paras 17–19)
10. Procedure. Locus standi. “So far the issue of not having locus standi by the petitioner the same was set at rest in the judgement delivered by the Learned Single Judge where it was considered that the petitioner/Appellant the assignee of the patent has been impleaded in favour of whom the said Patent was assigned.” (para 21)
11. Disposition. “In view of the above discussions and considering the factual aspects with the relevant provisions of the Constitution of India this court finds no merit in the instant appeal to interfere with the judgement and order passed by the Learned Single Judge.” “Hence the instant appeal stands dismissed.” (paras 27–28)

Subsequent treatment

• Appealed — A special leave petition against this judgment is pending before the Supreme Court, which issued notice in September 2026.