Dr Snehlata C Gupte v Union of India (2010)

Summary

“The short but interesting question of law common to all these petitions: When can a patent be said to be granted under the Patents Act, 1970” ... “The question arises in the context of the dismissal of pre-grant oppositions by the Controller of Patents” ... “on the ground that they were time-barred” (para 1). In the first set of petitions, the pre-grant opposition of SDL (“Span Diagnostics Ltd.”) to the patent applications of J. Mitra & Company “came to be rejected by the Controller on 23rd August 2006” by an order reading “I hereby order to grant” (para 4). “On the very next day, i.e. 24th August 2006 Dr. Snehlata Gupte” ... “filed a pre-grant opposition” and “On 5th September 2006, Dr. Girish Rindani” ... “filed a pre-grant opposition” (paras 7–8). In the second set, Lalit Mahajan’s patent “was granted and was also sealed on 16th October 2008” and Zephyr’s pre-grant opposition was filed “on 12th December 2008” (para 23). In the third, “the Controller issued a letter to the Petitioner on 28th March 2008” stating that Tibotec’s application “has been found in order for grant” (para 29), and on Cipla’s later opposition “the Assistant Controller allowed the pre-grant opposition and refused to the Petitioner the grant of the patent on the ground of lack of inventive step.” (para 32)

The Court held that “the sealing of the patent and the entering of the patent in the Register are” ... “intended to be ministerial acts evidencing the grant of patent, which is at a stage anterior to those ministerial acts” (para 53), and that “the date of grant of patent is the date on which the Controller passes an order to that effect on the file.” (para 54) “once a final order granting patent is passed by the Controller on the file, there is no question of thereafter entertaining a pre-grant opposition as it is barred under Section 25 (1) with no discretion given to the Controller.” (para 56) The communication to Tibotec “was merely a communication stating that the application has been found in order for grant. It is not an order to grant patent.” (para 73) The first set of petitions was “dismissed with costs of Rs.20,000/- each” (para 70), the second set “dismissed with costs of Rs. 20,000/- each” (para 72) and Tibotec’s petition “dismissed with costs of Rs.20,000/-” (para 75).

What the court decided

1. The date of grant. “When read continuously, the language of Section 43 (1) does appear to indicate that it is the decision taken by the Controller on file which is the determining event for ascertaining ’the date of grant of patent.’ The sealing of the patent and the entering of the patent in the Register obviously follows the act of the Controller passing an order to the effect that the patent has been granted. In other words, the sealing of the patent and the entering of the patent in the Register are, given the language of Section 43 (1) of the Act, intended to be ministerial acts evidencing the grant of patent, which is at a stage anterior to those ministerial acts.” (para 53) “This court, for the aforementioned reasons, holds that for the purposes of Section 43 (1) of the Act, the patent is ‘granted’ on the date on which the Controller passes a final order to that effect on the file.” (paras 53, 65)
2. Publication follows grant. “The act of publication clearly follows the grant of patent. Per force the grant of patent is anterior to the publication and has to necessarily be at a point earlier to the publication. It is, therefore, not possible to agree with the submissions made on behalf of the pre-grant opposers in the present batch of cases that the patent cannot be said to have been granted till this fact is published in the official gazette. Given that the interpretation of the provision has to be contextual, this Court holds that the date of grant of patent is the date on which the Controller passes an order to that effect on the file.” (para 54)
3. Purposive construction. “In adopting the above interpretation of Section 43 and other related provisions of the Act this Court has kept in view the following observations of the Supreme court in Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd. (2008) 13 SCC 30, in paras 137 and 139, which though made in the context of the Copyright Act may well apply to the present cases as well”, including that “It is now trite law that literal interpretation should be avoided when it leads to absurdity” and that “It is a statute where a purposive construction is warranted.” (para 64)
4. Grant and later challenges. “The thrust of the Act is that the mere grant of patent does not ensure its validity. This is plain from Section 13(4) of the Act. Even the grant of a patent does not ensure that there will be no further challenge.” (para 46) “The scheme of the Patents Act, therefore, is such that there are several hurdles to cross before the grant of a patent can be said to be final.” (paras 46–47)
5. Time for a pre-grant opposition. “The amendment in Section 25 clearly, therefore, enlarges the time for filing of a pre-grant opposition.” (para 45) “Since there is already a loss of time for the patent holder in the above processes, the time period envisaged by Section 25(1) of the Act for filing of a pre-grant opposition cannot possibly be liberally construed, notwithstanding that there is no specific time period mentioned therein. The outer limit is the date on which the patent is granted.” (paras 45, 47)
6. Rule 55(6). “The language of Rule 55 (6) leaves no manner of doubt that these two actions i.e. the consideration of the representation and the final decision on the application for grant of patent take place simultaneously.” (para 51) “Then the scheme of the Act requires the Controller to deal with such subsequently filed pre-grant oppositions as well. However, once a final decision is pronounced on the pre-grant oppositions, the Controller should, consistent with the requirement of Rule 55 (6) simultaneously pronounce the decision on the application for grant of patent. The Controller should clearly state, simultaneously, that the application is found in order and that the patent is being granted.” (paras 51–52)
7. No opposition after the final order. “Likewise, once a final order granting patent is passed by the Controller on the file, there is no question of thereafter entertaining a pre-grant opposition as it is barred under Section 25 (1) with no discretion given to the Controller. If a review petition is filed under Section 77 (1) (f) read with Rule 130, it will be by those who are parties to the order of the Controller or the Assistant Controller the review of which is sought. If such review petition is entertained, and the order is recalled then as it happens with judicial orders by courts, the clock is put back to the stage where the original order was passed and all legal consequences would flow. This by no means alters the fact that the date of the grant of patent is the date on which the Controller or Assistant Controller passes an order on file granting the patent.” (para 56)
8. Any person and a person interested. “The Act, therefore, makes a distinction between an opposer at the stage of pre-grant opposition, who could be ‘any’ person, and the opposer at the post-grant stage, who could only be a ‘person interested’.” (para 60) “Even if such ‘interested’ person misses the bus at the pre-grant stage, the right of such person to oppose at the post-grant stage is preserved under Section 25 (2) of the Act.” “It would be necessary, therefore, for such person (who may not be an ‘interested’ person) to be vigilant and to watch out for the date of advertisement of the complete specification and understand that the limitation for filing a pre-grant opposition begins to run from that date onwards.” (paras 60–61)
9. Serial oppositions. “In other words, if this Court were to hold that the date of the grant of patent is only the date on which the factum of such grant is entered in the Register, then there would be no end to filing of pre-grant oppositions as long as on account of some delay on the administrative side the factum of grant of patent is not entered in the Register. Given the scheme of the Act, and the number of hurdles an applicant for grant of a patent has to overcome, even if the application is found to be ‘in order for grant’, it is not possible to accept the interpretation put forth by the pre-grant opposers.” (para 62)
10. “In order for grant”. “The mere communication by the Controller to the applicant for grant of patent that the application has been found in order subject of course to the decision on pre-grant opposition, if any filed, cannot be construed as the official decision of the Controller granting the patent. There has to be an order on file passed by the Controller holding that the patent has been found in order and that patent is granted. Until and unless such an order is passed on file, it cannot be said that the patent has been granted.” (para 63)
11. Applied to the J. Mitra patents. “Although, as pointed out by learned counsel for the Petitioners, the said order requires the applicant (J.Mitra & Co.) to amend the specification to include a cross reference, it does not materially affect the factum of the grant of patent. The fact that it was entered in the Register on 22nd September 2006 would not make any difference to this position.” “The date of the grant of the patent in question to J.Mitra & Co. should be taken as 23rd August 2006.” (para 66) “Consequently, any pre-grant opposition filed after 23rd August 2006 was clearly barred under Section 25 (1) of the Act.” (paras 66–67)
12. Abuse of process. “Notwithstanding the above conclusion, this Court also holds that the filing of pre-grant opposition by Dr. Gupte and Dr. Rindani subsequent to 23rd August 2006 was, apart from being not maintainable in law, also an abuse of the process of law.” “There has not been any effective denial of the fact that both Petitioners were associated with SDL” (“Span Diagnostics Ltd.”) “in some capacity or the other.” (para 68)
13. Applied to Zephyr and Tibotec. Of Zephyr, “There can be no manner of doubt that the filing of such pre-grant opposition was subsequent to the grant of patent and was barred under Section 25(1) of the Act.” (para 71) Of Tibotec, “when the pre-grant opposition was filed by Cipla Ltd on 26th June 2008 there was no grant of patent by that date and, therefore, such application was maintainable in terms of Section 25(1) of the Act.” (paras 71, 73)
14. Procedure. The appeal to the Appellate Board. “There is yet another ground for not entertaining the plea of the Petitioner. The challenge is to an order refusing the grant of patent which is relatable to Section 15 of the Act. This is appealable before the IPAB” (“Intellectual Property Appellate Board”) “under Section 117A of the Act as has been held by this Court in UCB Farchim Sa v. Cipla Ltd. 167 (2010) DLT 459.” (para 74)
15. Procedure. Directions to the Controller. The Court asked the Controller “to list cases for pronouncement of orders and make that fact known by publishing a ‘cause list’ of such cases under the heading ‘for pronouncement of orders’ the previous evening both on the website as well the notice Board of the Office of the Controller” (para 55); held that “The Controller should pass the ‘final order’ saying that ’the patent is hereby granted’ only after all amendments have been carried out to the satisfaction of the Controller by the applicant” (para 57); directed “that every final order granting the patent passed by the Controller or the Assistant Controller, as the case may be, should be digitally signed by the Controller or the Assistant Controller and placed on the website of the Controller on the very same day without any unnecessary delay” (para 58); and ordered practice directions that “will be prospective in the sense they will not result in the reopening of orders granting patent that have attained finality.” (paras 55, 57–58, 76)

Subsequent treatment

• Appealed — A Division Bench of the Delhi High Court dismissed the appeals against this judgment in April 2012, affirming that a patent is granted on the date the Controller passes the order granting it on the file.
• Distinguished — In Neon Laboratories v Troikaa Pharma (2010) the Division Bench of the Bombay High Court held that this judgment’s observations “are to be seen in the light of the ultimate finding that the opposition must be filed before the grant” and that “This decision is of no assistance in resolving the present controversy.” (para 53)