Summary
In Vertex Pharmaceuticals v. Controller General of Patents, the Delhi High Court held that a pre-grant opposition is not maintainable once the Controller signs the patent grant order. The Court emphasized that the grant date is determined by the signature, not online publication, rendering the Controller functus officio post-signature.
The Delhi High Court, in its decision in Vertex Pharmaceuticals Inc. v. Controller General of Patents & Ors., clarified that a patent is deemed granted on the date the Controller signs the grant order, and not on the date it is uploaded online or recorded in the Register of Patents. The Court further stated that once the grant order is signed, the Controller becomes functus officio and cannot entertain a pre-grant opposition under Section 25(1), regardless of whether the patent certificate has been issued or the order has been published online.
Background
The case arose from an unusual situation where a pre-grant opposition under Section 25(1) of the Patents Act, 1970, was filed after the Controller had signed the order granting the patent, but before the grant order was uploaded on the official website and the patent certificate was issued.
Vertex Pharmaceuticals (“Vertex”) was granted a patent (Application No. 202017026584) on November 28, 2023, for a compound used in the treatment of cystic fibrosis, with no opposition pending at the time of grant. However, a pre-grant opposition was filed shortly before the grant order was uploaded online, even though it had already been signed by the Controller. The opposition introduced three new prior art references not previously cited by the Examiner, prompting the Controller to accept the opposition and issue a notice on 08.12.2023 initiating re-examination proceedings.
In response, Vertex filed a miscellaneous petition under Section 80 of the Patents Act, read with Rules 128 and 129, seeking dismissal of the opposition as the patent had already been granted. However, the Controller upheld the maintainability of the opposition vide an order dated 05.04.2024.
Vertex filed separate writ petitions before the Delhi High Court, challenging both the notice and the order issued in the miscellaneous petition.
Arguments by the Parties
Vertex argued that the Controller’s order granting the patent was final and binding, and that any subsequent actions, such as recording the grant in the Register of Patents or uploading it on the IPO website, were purely ministerial formalities. Emphasizing that no opposition was pending at the time the order was signed, Vertex argued that the subsequently filed pre-grant opposition was ex-facie illegal and liable to outright dismissal. Vertex further maintained that once the order was signed, the Controller became functus officio, and therefore lacked the authority to entertain the opposition or issue the impugned notice.
The counsel appearing for the pre-grant opponent submitted that Section 25(1) and Section 43(1) of the Act only mention the ‘date of grant’, and not the ‘time of grant’ as the cut-off for filing a pre-grant opposition and any delay in publication of the grant order due to systemic issues should not prejudice the opponent.
Court’s Analysis
In its analysis, the Court noted that the grant of a patent is complete on the date the Controller signs the order, provided no pre-grant opposition is pending at that time. It reaffirmed that the ‘date of order’ refers solely to the date of passing of the order, and remains unchanged and unaffected by the subsequent date/ act of uploading it online.
Since the pre-grant opposition was filed after the grant order had been signed, the Court found that the Controller had become functus officio and lacked the authority to consider any opposition or issue further notice in relation to the application. It noted that the delay in uploading the order was merely a technical lapse for which Vertex could not be penalized.
The Court also observed that accepting a pre-grant opposition filed after the grant of a patent violated the statutory scheme of the Patents Act and amounted to an abuse of the process. It dismissed the opponent’s reliance on Sections 25(1) and 43(1), ruling that the right to file a pre-grant opposition had lapsed once the Controller signed the grant order.
Conclusion
The Court allowed Vertex’s writ petitions, clarifying that a pre-grant opposition is not maintainable once the Controller has granted the patent. Consequently, it quashed the impugned notice dated December 8, 2023, as well as the Controller’s order dated April 5, 2024.
Citation: Vertex Pharmaceuticals Incorporated vs Controller General of Patents, Designs, Trademark and Geographical Indications & Ors, W.P.(C)-IPD-10/2024, Neutral Citation No.
2025:DHC:3096 (H.C. Delhi April 30, 2025).
Article and Accessibility Review: Gaurav Mishra
